May Patents Ltd.Download PDFPatent Trials and Appeals BoardOct 22, 20212020004104 (P.T.A.B. Oct. 22, 2021) Copy Citation 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. 15/992,219 05/30/2018 Yehuda BINDER BINDER-014-US6 9990 131926 7590 10/22/2021 May Patents Ltd. c/o Dorit Shem-Tov P.O.B 7230 Ramat-Gan, 5217102 ISRAEL EXAMINER KHAN, HASSAN ABDUR-RAHMAN ART UNIT PAPER NUMBER 2456 MAIL DATE DELIVERY MODE 10/22/2021 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 YEHUDA BINDER and BENJAMIN MAYTAL ____________ Appeal 2020-004104 Application 15/992,219 Technology Center 2400 ____________ Before JOHN A. JEFFERY, JUSTIN BUSCH, and ADAM J. PYONIN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–66. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as May Patents Ltd. Appeal Br. 2. Appeal 2020-004104 Application 15/992,219 2 STATEMENT OF THE CASE Appellant’s invention is a control system including an appliance 58a, AC power plug 68, and sensor unit 50e. See Abstract; Spec. 109, 112; Fig. 5e. The sensor unit encloses (1) sensors 57a and 57b measuring current flow from the AC power plug to the appliance; (2) an antenna 55 communicating over a wireless network; and (3) a wireless transceiver 54 that (a) transmits digital data to the wireless network responsive to measured current flow from the sensors, and (b) receives digital data from the wireless network. See Spec. 83, 112, 163–65; Figs. 5e, 17. Claim 1 is illustrative: 1. A device for switching and monitoring an Alternating Current (AC) powered appliance, for use with in-wall AC power cable carrying an AC power and connected thereto by an outlet or via an outlet opening, and for use with a wireless network, the device comprising: a first AC connector for connecting to the in-wall AC power cable; a second AC connector for connecting the appliance to the AC power cable to be powered by the AC power; an electrically actuated switch connectable between the first and second AC connectors for switching the AC power to the appliance; a current sensor couplable between the first and second AC connectors for measuring an AC current to the appliance; an antenna for communication over the wireless network; a wireless transceiver coupled to the antenna for transmitting digital data to, and for receiving digital data from, the wireless network; and Appeal 2020-004104 Application 15/992,219 3 a single enclosure housing the electrically actuated switch, the current sensor, the antenna, and the wireless transceiver, wherein the electrically actuated switch is coupled to the wireless transceiver for being activated in response to digital data received from the wireless network, wherein the current sensor is coupled to the wireless transceiver for transmitting digital data in response to the measured AC current to the wireless network, wherein the device is powered by the AC power when connected to the AC power cable, and wherein the device is consists of, comprises, or is integrated with, the outlet or a plug-in module that is pluggable to the outlet. THE REJECTIONS The Examiner rejected claims 1–9, 11, 12, 26–29, 31, 44, 51–55,2 62, 65, and 66 under 35 U.S.C. § 102(b) as anticipated by Sharood (US 2001/0025349 Al; published Sept. 27, 2001). Non-Final Act. 3–15.3 2 Although the Examiner includes claims 56 and 57 in the statement of the anticipation rejection, the Examiner nonetheless clarifies that these claims were rejected as obvious over Sharood and Hendrickson—not anticipated by Sharood. See Ans. 17–18. We, therefore, omit claims 56 and 57 here and include them in connection with the obviousness rejection over Sharood and Hendrickson to clarify the record, and treat the Examiner’s error in this regard as harmless. 3 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed December 2, 2019 (“Non-Final Act.”); (2) the Appeal Brief filed December 8, 2019 (“Appeal Br.”); (3) the Examiner’s Answer mailed April 2, 2020 (“Ans.”); and (4) the Reply Brief filed May 12, 2020 (“Reply Br.”). Appeal 2020-004104 Application 15/992,219 4 The Examiner rejected claims 10, 13–15, 17, 18, and 47–49 under 35 U.S.C. § 103 as unpatentable over Sharood and Legaspi (US 2011/0170377 A1; published July 14, 2011) (“Legaspi ’377”). Non-Final Act. 16–21. The Examiner rejected claim 16 under 35 U.S.C. § 103 as unpatentable over Sharood, Legaspi ’377, and Rada (US 2011/0251807 A1; published Oct. 13, 2011). Non-Final Act. 22. The Examiner rejected claim 23 under 35 U.S.C. § 103 as unpatentable over Sharood and Rada. Non-Final Act. 22–23. The Examiner rejected claims 19–22, 24, 25, 30, and 32 under 35 U.S.C. § 103 as unpatentable over Sharood and Kiko (US 2005/0125083 A1; published June 9, 2005). Non-Final Act. 23–28. The Examiner rejected claims 33–35, 37, 38, 42, 43, 45, 46, 56, 57, 63, and 64 under 35 U.S.C. § 103 as unpatentable over Sharood and Hendrickson (US 2011/0148651 A1; published June 23, 2011). Non-Final Act. 13–14, 28–32. The Examiner rejected claims 39–41 under 35 U.S.C. § 103 as unpatentable over Sharood, Hendrickson, and Kiko. Non-Final Act. 32–35. The Examiner rejected claim 36 under 35 U.S.C. § 103 as unpatentable over Sharood and Mehta (US 2010/0211359 A1; published Aug. 19, 2010). Non-Final Act. 35. The Examiner rejected claim 50 under 35 U.S.C. § 103 as unpatentable over Sharood, Legaspi ’377, and Legaspi (US 2012/0325197 A1; published Dec. 27, 2012) (“Legaspi ’197”). Non-Final Act. 35–36. The Examiner rejected claims 58, 60, and 61 under 35 U.S.C. § 103 as unpatentable over Sharood and Ansari (US 2010/0071053 A1; published Mar. 18, 2010). Non-Final Act. 36–38. Appeal 2020-004104 Application 15/992,219 5 The Examiner rejected claim 59 under 35 U.S.C. § 103 as unpatentable over Sharood, Ansari, and Wong (US 2011/0298301 A1; published Dec. 8, 2011). Non-Final Act. 38–39. RELATED APPEALS On page 2 of the Appeal Brief, Appellant informs us of four related appeals in the following applications: (1) 13/733,634; (2) 15/657,1634; (3) 15/361,434; and (4) 15/716,881; and (5) 15/992,221. These appeals were decided by other panels of this Board. See Ex parte Binder, Appeal 2018- 007694 (PTAB Mar. 2, 2020), reh’g denied (PTAB May 18, 2020); Ex parte Binder, Appeal 2020-002056 (PTAB May 4, 2020); Ex parte Binder, Appeal 2019-000272 (PTAB June 10, 2020); Ex parte Binder, Appeal 2019-002059 (PTAB June 30, 2020); Ex parte Binder, Appeal 2020-002710 (PTAB July 22, 2021). Notably, in the ’2710 appeal, the Board affirmed in part the Examiner’s anticipation and obviousness rejections that cited prior art references at issue here, namely Sharood, Legaspi ’377, Rada, Kiko, Hendrickson, Mehta, Ansari, and Wong. Although not indicated in the Appeal Brief or the Reply Brief, this appeal is also related to another appeal in copending application 15/992,219, where we affirmed the Examiner’s obviousness rejections that cited one of the references at issue here, namely Kiko. See Ex parte Binder, Appeal 2020-004094 (PTAB Sept. 27, 2021). 4 Although Appellant incorrectly identifies this Application Number as 16/657,163 (Appeal Br. 2), we nonetheless present the correct Application Number 15/657,163 here for clarity and treat Appellant’s error in this regard as harmless. Appeal 2020-004104 Application 15/992,219 6 THE ANTICIPATION REJECTION Regarding independent claim 1, the Examiner finds that Sharood discloses a device for switching and monitoring an AC-powered appliance, where the device has every recited element including a current sensor, namely measure and transmit circuitry 620, between the device’s AC connectors for measuring AC current to the appliance, where the sensor is coupled to the device’s wireless transceiver for transmitting digital data to a wireless network responsive to measured AC current. Non-Final Act. 3–5. The Examiner also finds that the device’s electrically-actuated switch, namely a power switching device in retrofit plug 125, is coupled to the transceiver for being activated responsive to digital data received from the network. Id. at 5. Appellant argues that not only is the present application’s prosecution pattern a “moving target” by including four non-final Office Actions, the Examiner’s rejection is vague and conclusory because it is unclear how claimed elements or features are equated to elements or features in the cited prior art references. Appeal Br. 5–7. Appellant adds that Sharood lacks the recited current sensor and does not activate a switch responsive to data received over a wireless network as claimed. Id. at 7–8. Appellant argues other recited limitations summarized below. Appeal 2020-004104 Application 15/992,219 7 ISSUES Under § 102, has the Examiner erred by finding that Sharood discloses a device for switching and monitoring an AC current powered appliance, where the device comprises: (1)(a) a current sensor couplable between first and second AC connectors for measuring AC current to the appliance, where the sensor is coupled to the device’s wireless transceiver for transmitting digital data to a wireless network responsive to measured AC current, and (b) an electrically- actuated switch coupled to the transceiver for being activated responsive to digital data received from the network as recited in claim 1? (2) the current sensor is a non-contact or non-conductive current meter as recited in claim 4? (3) the wattmeter recited in claim 7? (4) the wattmeter or current sensor are induction based as recited in claim 9? (5) the electrically-actuated switch is a latching or non-latching type relay as recited in claim 11? (6) a first sensor having an output that responds to a physical phenomenon in the single enclosure as recited in claim 26? (7) an actuator in the device’s single enclosure for affecting a physical phenomenon, where the actuator is coupled to the wireless transceiver for being activated or controlled responsive to digital data received from the wireless network as recited in claim 51? (8) a first connector in the single enclosure for connecting to a first device external to the enclosure as recited in claim 62? Appeal 2020-004104 Application 15/992,219 8 (9) a first connector in the single enclosure for connecting to a first device external to the enclosure, where the first connector is coupled to an AC/DC converter for DC powering the first device as recited in claim 66? ANALYSIS Claims 1–3, 5, 6, 8, and 65 On this record, we see no error in the Examiner’s anticipation rejection of claim 1. Claim 1 recites, in pertinent part, a device for switching and monitoring an AC current powered appliance, the device comprising a current sensor couplable between first and second AC connectors for measuring AC current to the appliance, where the sensor is coupled to the device’s wireless transceiver for transmitting digital data to a wireless network responsive to measured AC current. In the rejection, the Examiner refers to Sharood’s retrofit plug 125 in Figures 6b and 6d in connection with the recited switching and monitoring device. See Non-Final Act. 4 (citing Sharood ¶ 86; Fig. 6d). The Examiner also refers to Sharood’s measure and transmit circuit 620 inside the retrofit plug in connection with the recited current sensor. See id.; Ans. 6 (citing Sharood ¶¶ 88–89). Based on these findings, we presume the Examiner maps (1) the recited device to Sharood’s retrofit plug, and (2) the recited current sensor to Sharood’s measure and transmit circuit. On this record, we see no error in these findings. Sharood’s retrofit plug 125, shown in Figures 6a to 6d, is a plug- through device that can be attached in line with a main appliance electrical supply. Sharood ¶ 83. As shown in Figures 6b and 6d, retrofit plug includes Appeal 2020-004104 Application 15/992,219 9 measure and transmit circuit 620 connected to current transformer 610 to measure current drawn by the appliance attached to the retrofit plug. Id. ¶ 88. Notably, measure and transmit circuit can monitor and report the current drawn by the attached appliance and can perform bi-directional communication by translating between a communications media protocol used by control server 100 and the appliance’s control protocol. Sharood ¶ 89. The retrofit plug also includes a communication circuit that includes power line communication (PLC) transceiver 630 that sends data from the measure and transmit circuit to a remote processor, such as server 100. Id. ¶ 91. In addition, not only can the retrofit plug include an RF transceiver so that the plug can be incorporated in a wireless network, but the plug can also include a wireless modem. See id. ¶¶ 85, 98. Given this functionality, and despite Appellant’s arguments to the contrary (Appeal Br. 5–8; Reply Br. 2–3), Sharood’s current sensor, namely the measure and transmit circuit, is coupled to a wireless transceiver (i.e., either an RF transceiver or wireless modem) for transmitting digital data to a wireless network responsive to measured AC current. To the extent Appellant contends that the Examiner’s use of the term “can” in connection with Sharood’s functionality in this regard does not show that Sharood necessarily discloses those features to anticipate the recited elements (see Reply Br. 2–3), we find such an argument unavailing. To be sure, to anticipate a claim, every recited element must be necessarily present—not merely probably or possibly present—in a prior art reference. See Guangdong Alison Hi-Tech Co. v. Int’l Trade Comm’n, 936 F.3d 1353, 1363–64 (Fed. Cir. 2019). That is, if a prior art reference does Appeal 2020-004104 Application 15/992,219 10 not disclose a particular element of the claim expressly, that reference may nevertheless anticipate if that element is inherent in its disclosure. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The disputed claim elements are necessarily present here. As noted above, Sharood discloses the recited current sensor including its coupling to a wireless transceiver for transmitting digital data to a wireless network responsive to measured AC current as claimed. That another panel of this Board affirmed the Examiner’s anticipation rejection of a claim reciting a similar limitation over Sharood underscores the propriety of the Examiner’s findings in this regard. See Ex parte Binder, Appeal 2020-002710 (PTAB July 22, 2021), at 2, 6–11. Sharood also discloses an electrically-actuated switch, namely a power-switching device, coupled to the plug’s transceiver for being activated responsive to digital data received from the network as claimed. See Non-Final Act. 4–5 (citing Sharood ¶¶ 85, 94). As Sharood’s paragraph 94 explains, the retrofit plug’s power-switching device is under control of the measure and transmit circuit that, as noted above, communicates bi- directionally with server 100 and via a wireless network via a wireless transceiver, namely an RF transceiver or wireless modem. See Sharood ¶¶ 85, 91, 98. Given this data communication capability, and the power- switching device’s ability to enable remote control and shutdown of an attached appliance in paragraph 94, Sharood’s power-switching device is effectively an electrically-actuated switch that is coupled to a wireless transceiver for activation responsive to digital data received from a remote source, namely from a wireless network. Appellant’s arguments to the contrary (Appeal Br. 8; Reply Br. 2–3) are unavailing and not commensurate Appeal 2020-004104 Application 15/992,219 11 with the scope of the claim. That another panel of this Board affirmed the Examiner’s anticipation rejection of a claim reciting similar limitations over Sharood underscores the propriety of the Examiner’s findings in this regard. See Binder, Appeal 2020-002710, at 2, 6–11, 15–16. Appellant’s reliance on a non-precedential Board decision, namely Ex parte Hillis, Appeal 2017-007947 (PTAB Mar. 27, 2018) that, according to Appellant, is similar to the present case because the Board reversed a rejection under 35 U.S.C. § 112 “since the Examiner changed his opinion from a former similar application” (Appeal Br. 6), is unavailing. Not only do the facts in that case differ from those at issue here, as a non-precedential decision, it is not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) (“SOP 2”) § I(B), https://www.uspto.gov/ sites/default/files/documents/SOP2%20R10%20FINAL.pdf. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 3, 5, 6, 8, and 65 not argued separately with particularity. Claim 4 We also sustain the Examiner’s rejection of claim 4 reciting the current sensor is a non-contact or non-conductive current meter. Our emphasis on the term “or” underscores that only one of the recited alternatives need be disclosed by the prior art to satisfy the limitation. Despite Appellant’s arguments to the contrary (Appeal Br. 8–9), we see no error in the Examiner’s reliance on current transformer 610 associated with Sharood’s measure and transmit circuit in paragraph 88 for anticipating the recited non-contact current meter. See Non-Final Act. 6; Ans. 6–7. Appeal 2020-004104 Application 15/992,219 12 First, Appellant fail to address—let alone persuasively rebut—the Examiner’s finding that a current transformer works on a non-contact principle, much less address the Examiner’s reliance on an electrical engineering handbook to support that finding. See Ans. 7. Second, a current transformer is defined, in pertinent part, as “[a] transformer used to increase or decrease current flow.” THE ILLUSTRATED DICTIONARY OF ELECTRONICS 160 (Stan Gibilisco ed., 8th ed. 2001). That same dictionary defines “transformer,” in pertinent part, as “[a] device using electromagnetic induction to transfer electrical energy from one circuit to another (i.e., without direct connection between them).” Id. at 690 (emphasis added). Our emphasis underscores that by using electromagnetic induction and, therefore, no direct connection between associated circuits, current transformers, such as Sharood’s current transformer 610, are non- contacting at least in that sense. Therefore, Sharood’s measure and transmit circuit that is connected to that current transformer to sense current drawn by the appliance is effectively a non-contact current meter. See Sharood ¶ 88. Appellant’s arguments to the contrary (Appeal Br. 8–9) are unavailing and not commensurate with the scope of the claim. Therefore, we are not persuaded that the Examiner erred in rejecting claim 4. Claim 7 We also sustain the Examiner’s rejection of claim 7. Claim 7 depends from claim 5 that recites, in pertinent part, a wattmeter connectable between the first and second AC connectors. Claim 7 adds that the wattmeter (1) comprises a bolometer, or (2) wherein the wattmeter accumulates or Appeal 2020-004104 Application 15/992,219 13 averages readings. Our emphasis on the term “or” underscores that only one of the recited alternatives (1) or (2) need be disclosed by the prior art to satisfy the limitation. Moreover, for alternative (2), only one of the recited alternatives in connection with that particular alternative, namely that the wattmeter accumulates or averages readings, need be disclosed by the prior art to satisfy the limitation. Given the claim’s scope and breadth in light of these alternatives, we see no error in the Examiner’s anticipation rejection. In rejecting claim 5 from which claim 7 depends, the Examiner refers to Sharood’s measure and transmit circuit 620 and its ability to derive a power indication from the measured load current in paragraph 89 in connection with the recited wattmeter (Non-Final Act. 6–7)—a finding that is undisputed. In rejecting claim 7, the Examiner refers to Sharood’s measure and transmit circuit’s ability to store current draw or power data in paragraph 90. See Non-Final Act. 7; Ans. 7. Because storing this data effectively accumulates in memory readings associated with current draw or power, Sharood effectively discloses a wattmeter that at least accumulates readings as claimed. Appellant’s arguments to the contrary (Appeal Br. 9; Reply Br. 3) are unavailing and not commensurate with the scope of the claim. Therefore, we are not persuaded that the Examiner erred in rejecting claim 7. Claim 9 We also sustain the Examiner’s rejection of claim 9 reciting that the wattmeter or current sensor are induction based. Our emphasis on the term “or” underscores that only one of the recited alternatives need be disclosed Appeal 2020-004104 Application 15/992,219 14 by the prior art to satisfy the limitation. Therefore, to the extent Appellant contends that the prior art must disclose a wattmeter to anticipate the claim,4 we disagree. On this record, we see no error in the Examiner’s reliance on Sharood’s current transformer in paragraph 88 for anticipating the recited induction-based current sensor. See Non-Final Act. 8; Ans. 7–8. As noted previously, Sharood’s current transformer that is connected to the measure and transmit circuit uses electromagnetic induction to sense current. Therefore, Sharood’s current sensor is induction based. And because the measure and transmit circuit also functions as a wattmeter and is connected to the current transformer as noted previously, Sharood’s wattmeter is likewise induction based. Sharood therefore anticipates claim 9 for this reason alone. Appellant’s arguments to the contrary (Appeal Br. 9–10; Reply Br. 3– 4) are unavailing and not commensurate with the scope of the claim. First, Appellant’s reliance on Sharood’s paragraphs 90 and 129 to 140 on page 9 of the Appeal Brief do not squarely address—let alone persuasively rebut— the Examiner’s reliance on Sharood’s paragraph 88 in the rejection. See Non-Final Act. 8. Nevertheless, leaving this inconsistency aside, Appellant’s arguments are not commensurate with the scope of the claim that encompasses the induction-based functionality of Sharood’s current sensor noted above. To be sure, the Examiner’s alternative rationale, which relies on the functionality of a retrofit damper in Sharood’s paragraph 131 (Non-Final 4 See Reply Br. 4 (arguing that the Answer fails to show a wattmeter as claimed). Appeal 2020-004104 Application 15/992,219 15 Act. 8; Ans. 7–8), is problematic as Appellant indicates (Appeal Br. 9–10; Reply Br. 4); it is well settled that to anticipate under § 102, the prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). “Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. See also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). In short, the functionality associated with Sharood’s retrofit damper pertains to a separate embodiment from that relied on in connection with other recited aspects of Sharood’s device, including the retrofit plug. Compare Sharood ¶¶ 129–140, with Sharood ¶¶ 82–100. Therefore, the Examiner’s reliance on these disparate embodiments in Sharood is improper for anticipation because the Examiner fails to show that Sharood necessarily arranges the relied-upon elements associated with these different embodiments as claimed. See Net MoneyIN, 545 F.3d at 1369; accord Binder, Appeal 2020-002710, at 13–14 (reversing Examiner’s anticipation rejection relying on Sharood’s retrofit damper embodiment combined with disclosure from other embodiments, including the retrofit plug embodiment). Appeal 2020-004104 Application 15/992,219 16 Moreover, the Examiner’s reliance on the notion that combining two embodiments disclosed adjacent each other in a prior art reference as not requiring a leap of inventiveness (Ans. 8) is inapposite where, as here, the rejection is based on anticipation—not obviousness. See Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Despite the Examiner’s additional problematic reliance on disclosure associated with Sharood’s retrofit damper in paragraph 131, we nonetheless do not find the rejection is in error, for the Examiner’s rejection alternatively (and correctly) relies on the measure and transmit circuit and current transformer functionality in Sharood’s paragraph 88 that itself anticipates claim 7. See Non-Final Act. 8. Therefore, we are not persuaded that the Examiner reversibly erred in rejecting claim 9. Claims 11 and 12 We do not sustain the Examiner’s rejection of claim 11 reciting that the electrically-actuated switch is a latching or non-latching type relay. The Examiner relies solely on Sharood’s paragraph 131 for anticipating this limitation. See Non-Final Act. 8; Ans. 8. But as noted previously, this relied-on disclosure pertains to a retrofit damper—an embodiment different from that associated with the retrofit plug that was relied on to anticipate claim 1 from which claim 11 depends. Compare Sharood ¶¶ 129–140, with Sharood ¶¶ 82–100. In effect, the Examiner combines disclosure from different embodiments, namely embodiments associated with Sharood’s retrofit damper and retrofit plug, respectively, in finding anticipation. But as noted previously, the Examiner’s reliance on these disparate embodiments in Appeal 2020-004104 Application 15/992,219 17 Sharood is improper for anticipation because the Examiner fails to show that Sharood necessarily arranges the relied-upon elements associated with these different embodiments as claimed. See Net MoneyIN, 545 F.3d at 1369 accord Binder, Appeal 2020-002710, at 13–14, 16–17 (reversing Examiner’s anticipation rejection relying on Sharood’s retrofit damper embodiment combined with disclosure from other embodiments, including the retrofit plug embodiment). Moreover, the Examiner’s reliance on the notion that combining two embodiments disclosed adjacent each other in a prior art reference as not requiring a leap of inventiveness (Ans. 8) is inapposite where, as here, the rejection is based on anticipation—not obviousness. See Boston Scientific, 554 F.3d at 991. Therefore, we are persuaded that the Examiner erred in rejecting (1) claim 11, and (2) dependent claim 12 for similar reasons. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. Claims 26–29, 31, and 44 We also do not sustain the Examiner’s rejection of claim 26 reciting a first sensor having an output that responds to a physical phenomenon in the single enclosure. Our emphasis underscores that the phenomenon to which the sensor responds is in the single enclosure of the recited switching and monitoring device that the Examiner maps to Sharood’s retrofit plug in connection with claim 1 from which claim 26 depends. See Non-Final Act. 4–5. But in rejecting claim 26, the Examiner relies solely on Sharood’s paragraphs 130, 133, and 134 for anticipating this limitation. See Non-Final Appeal 2020-004104 Application 15/992,219 18 Act. 9; Ans. 9. As noted previously, this relied-on disclosure pertains to a retrofit damper—an embodiment different from that associated with the retrofit plug that was relied on to anticipate claim 1 from which claim 26 depends. Compare Sharood ¶¶ 129–140, with Sharood ¶¶ 82–100. In effect, the Examiner combines disclosure from different embodiments, namely embodiments associated with Sharood’s retrofit damper and retrofit plug, respectively, in finding anticipation. But as noted previously, the Examiner’s reliance on these disparate embodiments in Sharood is improper for anticipation because the Examiner fails to show that Sharood necessarily arranges the relied-upon elements associated with these different embodiments as claimed. See Net MoneyIN, 545 F.3d at 1369; accord Binder, Appeal 2020-002710, at 13–14, 16–17 (reversing Examiner’s anticipation rejection relying on Sharood’s retrofit damper embodiment combined with disclosure from other embodiments, including the retrofit plug embodiment). Moreover, the Examiner’s reliance on Boston Scientific, 554 F.3d at 991, for the notion that combining two embodiments disclosed adjacent each other in a prior art reference does not require a leap of inventiveness (Ans. 9) is inapposite where, as here, the rejection is based on anticipation—not obviousness as was the case in Boston Scientific. Therefore, we are persuaded that the Examiner erred in rejecting (1) claim 26, and (2) dependent claims 27–29, 31, and 44 for similar reasons. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. Appeal 2020-004104 Application 15/992,219 19 Claims 51, 54, and 55 We also do not sustain the Examiner’s rejection of claim 51. Claim 51 depends from independent claim 1 which recites, in pertinent part, an electrically-actuated switch connectable between the device’s first and second connectors for switching AC power to the appliance, where the switch is coupled to the wireless transceiver for being activated responsive to digital data received from the wireless network. Claim 51 adds an actuator in the device’s single enclosure for affecting a physical phenomenon, where the actuator is coupled to the wireless transceiver for being activated or controlled responsive to digital data received from the wireless network. Our emphasis underscores that claim 51 adds another distinct element, namely an actuator, to the device’s other recited elements, including the electrically-actuated switch in independent claim 1 from which claim 51 depends. Although the Specification does not define the term “actuator,” unlike other terms whose concrete definitions leave no doubt as to their meaning,5 the Specification nonetheless indicates that an actuator can be, quite broadly, any element designed for, or capable of, directly or indirectly changing, producing, or creating a physical phenomenon under an electric signal control. See Spec. 29. Given this broad description, an electrically-actuated switch, such as the power-switching device in Sharood’s retrofit plug in paragraph 94, certainly qualifies as an “actuator.” That is, Sharood’s power-switching device affects physical phenomena, including at least electrical current, 5 See, e.g., Spec. 9, 182–83 (defining various terms explicitly). Appeal 2020-004104 Application 15/992,219 20 voltage, and resistance, in connection with the circuit in which the switch is installed as well as the components associated with that circuit that are affected by these electrical “phenomena.” Accord Binder, Appeal 2020- 002710, at 15–16 (finding that Sharood’s power-switching device in paragraph 94 anticipated the then-recited actuator coupled to a wireless transceiver for affecting a physical phenomenon). But under claim differentiation principles, claim 51 requires an actuator in addition to the electrically-actuated switch: the actuator does not further limit that switch. Accord Appeal Br. 20 (noting this point); Reply Br. 14 (noting that the claim language differentiates the switch and actuator). Therefore, the Examiner’s mapping Sharood’s power-switching device in Sharood’s retrofit plug to both the recited electrically-actuated switch and actuator (see Non-Final Act. 4–5, 11) is improper, for it is well settled that when a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the claim’s terms. See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also Robertson, 169 F.3d at 745 (claims requiring three separate means not anticipated by structure containing only two means using one element twice). The Examiner’s anticipation rejection of claim 51 is, therefore, improper for that reason alone. Accordingly, we are persuaded that the Examiner erred in rejecting (1) claim 51, and (2) dependent claims 52–55 for similar reasons. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. Appeal 2020-004104 Application 15/992,219 21 Claim 62 We also do not sustain the Examiner’s rejection of claim 62. Claim 62 depends from claim 1 that recites, in pertinent part, (1) a first AC connector for connecting to the in-wall AC power cable, and (2) a second AC connector for connecting the appliance to the AC power cable. Claim 62 adds a first connector in the single enclosure for connecting to a first device external to the enclosure. Our emphasis underscores that claim 62 adds another distinct element, namely a first connector, to the device’s other recited elements, including the AC connectors in independent claim 1 from which claim 62 depends. Under claim differentiation principles, claim 62 requires a first connector in addition to the recited AC connectors: the first connector does not further limit the AC connectors. Accord Appeal Br. 28–29 (noting this point); Reply Br. 19 (emphasizing that claim 62 further comprises the first connector in addition to the AC connectors). Therefore, the Examiner’s finding that there is allegedly no mentioning or support in the claim language for a first connector in addition to the AC connectors (Ans. 19) is incorrect, for the Examiner ignores fundamental claim differentiation principles by improperly conflating these distinct recited elements. Therefore, the Examiner’s mapping the recited AC connectors in claim 1 and first connector in claim 62 to the same structure in Sharood, including the retrofit plug’s connector slots 601, 602 and connector pins 603, 604 (see Non-Final Act. 3–4, 14) is improper, for it is well settled that when a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the claim’s terms. See Lantech, Appeal 2020-004104 Application 15/992,219 22 32 F.3d at 547; see also Robertson, 169 F.3d at 745 (claims requiring three separate means not anticipated by structure containing only two means using one element twice). The Examiner’s anticipation rejection of claim 62 is, therefore, improper for that reason alone. That the Examiner improperly relies on Boston Scientific, 554 F.3d at 991, for the notion that combining two embodiments disclosed adjacent each other in a prior art reference does not require a leap of inventiveness (Ans. 20) only further undermines the propriety of the Examiner’s findings where, as here, the rejection is based on anticipation—not obviousness as was the case in Boston Scientific. Accord Reply Br. 19 (noting this discrepancy). Therefore, we are persuaded that the Examiner erred in rejecting claim 62. Claim 66 We also do not sustain the Examiner’s rejection of claim 66. Claim 66 depends from claim 65 that, in turn, depends from claim 1. Claim 1 recites, in pertinent part, (1) a first AC connector for connecting to the in- wall AC power cable, and (2) a second AC connector for connecting the appliance to the AC power cable. Claim 66 adds a first connector in the single enclosure for connecting to a first device external to the enclosure, where the first connector is coupled to an AC/DC converter for DC powering the first device. Our emphasis underscores that claim 66 adds another distinct element, namely a first connector, to the device’s other recited elements, including the AC connectors in independent claim 1 from which claim 66 depends. Appeal 2020-004104 Application 15/992,219 23 Under claim differentiation principles, claim 66 requires a first connector in addition to the recited AC connectors: the first connector does not further limit the AC connectors. Accord Appeal Br. 29 (noting this point); Reply Br. 19 (emphasizing that claim 62 further comprises the first connector in addition to the AC connectors). Therefore, the Examiner’s finding that there is allegedly no mentioning or support in the claim language for a first connector in addition to the AC connectors (Ans. 20) is incorrect, for the Examiner ignores fundamental claim differentiation principles by improperly conflating these distinct recited elements. Therefore, the Examiner’s mapping the recited AC connectors in claim 1 and first connector in claim 66 to the same structure in Sharood, including the retrofit plug’s connector slots 601, 602 and connector pins 603, 604 (see Non-Final Act. 3–4, 15) is improper, for it is well settled that when a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the claim’s terms. See Lantech, 32 F.3d at 547; see also Robertson, 169 F.3d at 745 (claims requiring three separate means not anticipated by structure containing only two means using one element twice). The Examiner’s anticipation rejection of claim 66 is, therefore, improper for that reason alone. That the Examiner improperly relies on Boston Scientific, 554 F.3d at 991, for the notion that combining two embodiments disclosed adjacent each other in a prior art reference does not require a leap of inventiveness (Ans. 20) only further undermines the propriety of the Examiner’s findings where, as here, the rejection is based on anticipation—not obviousness as was the case in Boston Scientific. Accord Reply Br. 21 (noting this discrepancy). Appeal 2020-004104 Application 15/992,219 24 Therefore, we are persuaded that the Examiner erred in rejecting claim 66. THE OBVIOUSNESS REJECTION OVER SHAROOD AND LEGASPI ’377 Claims 10 and 13 We sustain the Examiner’s rejection of claim 10 reciting the electrically actuated switch is “normally open” type, “normally closed” type, or a changeover switch, where the electrically actuated switch is “make- before-break” or “break-before-make” type, or where the electrically actuated switch have two or more poles or two or more throws, and the contacts of the electrically actuated switch are arranged as a Single-Pole- Double-Throw (SPDT), Double-Pole-Double-Throw (DPDT), Double-Pole- Single-Throw (DPST), or Single-Pole-Changeover (SPCO). Our emphases underscore that the claim is replete with alternative language that, when considered in light of the claim’s conjunctive “and” language, renders the claim’s scope ambiguous and subject to multiple plausible constructions under the claim’s broadest reasonable interpretation. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”); see also Manual of Patent Examining Procedure (MPEP) § 2173.05(b) (9th ed. rev. 10.2019 June 2020) (citing Miyazaki). Although the Examiner did not Appeal 2020-004104 Application 15/992,219 25 reject the claim as indefinite despite this authority, we nonetheless leave that question to the Examiner to reconsider after this decision. Turning to the rejection, we see no error in the Examiner’s rationale for combining Sharood with Legaspi ’377 despite Appellant’s arguments to the contrary. See Appeal Br. 30–33; Reply Br. 22–26. A key aspect of the Examiner’s rationale relies on the functionality of Sharood’s monitoring system that receives and provides power to an appliance. See Non-Final Act. 16–17; Ans. 21–23. Given this functionality, the Examiner concludes that it would have been obvious to enhance a power monitoring system that provides power to an appliance with methods for automatically disabling appliances upon the occurrence of a safety event by using a switch to cut off power to the appliance. See Non-Final Act. 17; Ans. 21–23. We see no error in these findings and conclusions. In short, enhancing an AC power-based system by using a switch as the Examiner proposes uses prior art elements predictably according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). To the extent Appellant contends that a motivation to combine Sharood with Legaspi ’377 cannot be found based on the switching functionality generally, simply because the combination includes Legaspi ’377’s SPDT relay (see Appeal Br. 30–33; Reply Br. 22–26), we are not persuaded. The same advantage of making electrical circuits safer by using a switching function generally is no less a predictable result merely because the switching function is from Legaspi ’377’s SPDT relay. We reach this conclusion even if Sharood already discloses features of remote shut down of an attached appliance, as Appellant contends (see Appeal Br. 32–33), because Sharood does not disclose performing such a Appeal 2020-004104 Application 15/992,219 26 shutdown with an SPDT relay as Legaspi ’377 suggests. Nevertheless, Appellant’s authority for the contention that reliance on “redundant” advantages from a cited art combination ostensibly precludes an obviousness conclusion (see id.) comes from non-precedential Board decisions Ex parte Saiki, Appeal 2000-0373 (BPAI Jan. 17, 2002) and Ex parte Burak, Appeal 2004-0823 (BPAI Dec. 8, 2004). Not only are the facts in these cases different from those at issue here, as non-precedential decisions, they are not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B). Nor have these decisions been designated as informative. See Alphabetical Listing of Informative Decisions, USPTO, https://www.uspto.gov/patents/ptab/decisions-and-opinions/informative- opinions-0. We also find that Legaspi ’377 is analogous art despite Appellant’s arguments to the contrary. See Appeal Br. 30; Reply Br. 22–23. Prior art is analogous if it is (1) from the same field of endeavor regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Therefore, contrary to Appellant’s suggestion (see Appeal Br. 30), the analogous art test does not ask whether the prior art references are analogous to each other, but rather asks whether the references are analogous to the claimed subject matter. See id.; see also In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). On this record then, we see no error in the Examiner’s proposed combination. Both Sharood and Legaspi ’377 are from the same field of endeavor as Appellant’s invention, namely environment control. Moreover, both Sharood and Legaspi ’377 are at least reasonably pertinent to Appeal 2020-004104 Application 15/992,219 27 Appellant’s problem of optimizing environment control networks by using sensors communicating over wireless networks. See Spec. 15, 75. Sharood pertains to a home automation system using a radio frequency network to monitor and optimize home utilities (see Sharood ¶¶ 54–55), and Legaspi ’377 pertains to appliance energy control over a wireless network using detectors to prevent appliance damage (see Legaspi ’377 ¶¶ 9–11, 61). That another panel of this Board found similar arguments unpersuasive in determining that Sharood and Legaspi ’377 were combinable in a related appeal involving similar subject matter only further weighs in favor of the Examiner. See Binder, Appeal 2020-002710, at 24–26. To the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Appeal Br. 31; Reply Br. 26), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistencies associated with that requirement. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”); MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Appeal 2020-004104 Application 15/992,219 28 Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Nor are we persuaded by Appellant’s contentions that the Examiner’s responses in the Examiner’s Answer to arguments raised in the Appeal Brief affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new ground of rejection. See Reply Br. 25–26. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 21–23. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 25–26), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 25–26) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claim 10, and claim 13 not argued separately with particularity. Appeal 2020-004104 Application 15/992,219 29 Claims 14, 15, 17, and 18 We also sustain the Examiner’s rejection of claim 14 reciting the wireless network is a Wireless Personal Area Network (WPAN), the antenna is a WPAN antenna, and the wireless transceiver is a WPAN modem. On this record, we are not persuaded of error in the Examiner’s rationale for combining Sharood with Legaspi ’377. See Non-Final Act. 17– 18; Ans. 23–24. Appellant’s contentions regarding the rejection as being improper for not being clear how Sharood is modified by Legaspi ’377 to arrive at the claims (see Appeal Br. 31) are unpersuasive. To be sure, “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.” See KSR, 550 U.S. at 418. On this record, however, we do not find error in the Examiner’s rejections relying upon the combination of Sharood and Legaspi ’377. The Examiner finds that Sharood discloses elements from claim 1 that are further limited by dependent claims 14, 15, 17, and 18. See Non-Final Act. 17–18. Moreover, the Examiner relies on Legaspi ’377 for its teachings for these further limitations of the wireless network. See id. To the extent Appellant contends that the Examiner’s articulated reasoning must detail how and where elements are incorporated into Sharood, and whether they are substitutes or additional components (see Appeal Br. 34–36; Reply Br. 26–29), we disagree. It is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. Appeal 2020-004104 Application 15/992,219 30 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. And here, the Examiner’s proposed combination predictably uses prior art elements according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. Nor are we persuaded of error in the Examiner’s rationale for combining Sharood with Legaspi despite Appellant’s arguments to the contrary. See Appeal Br. 34–36; Reply Br. 26–29. A key aspect of the Examiner’s rationale relies on the functionality of Sharood’s monitoring system that is able to output data from an appliance connected to a power supply and a wireless transceiver. See Non-Final Act. 17–18; Ans. 23–24. Given this functionality, the Examiner concludes that it would have been obvious to enhance a monitoring system that provides power and wireless networking to an appliance with methods for a particular type of wired and wireless signals transmission including voice and/or data signals or messages. See Non-Final Act. 18; Ans. 24. We see no error in these findings and conclusions. In short, employing different types of wireless signal communication capabilities with expanded communication forms including voice as well as data signals or messages under the Examiner’s proposed combination uses prior art elements predictably according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. That another panel of this Board found similar arguments unpersuasive in determining that Sharood and Legaspi ’377 were combinable in a related appeal involving similar subject Appeal 2020-004104 Application 15/992,219 31 matter only further weighs in favor of the Examiner. See Binder, Appeal 2020-002710, at 28–31. We reach this conclusion even if Sharood already discloses features of wireless communications as Appellant suggests (see Appeal Br. 35–36) because Sharood does not disclose performing wireless communications using the particular wireless and wired communication methods as Legaspi ’377 provides. Appellant’s authority for the contention that reliance on “redundant” advantages from a cited art combination ostensibly precludes an obviousness conclusion (see id. at 20–21) comes from the cited non- precedential Board decisions Ex parte Saiki, Appeal 2000-0373 (BPAI Jan. 17, 2002); Ex parte Burak, Appeal 2004-0823 (BPAI Dec. 8, 2004); Ex parte Anttila, Appeal 2010-006328 (BPAI Sept. 27, 2012); Ex parte Kastelewicz, Appeal No. 2008-004808 (BPAI June 9, 2009); and Ex parte Levine, Appeal 2010-001240 (BPAI Sept. 25, 2012). Not only are the facts in these cases different from those at issue here, as non-precedential decisions, they are not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B). Nor have these decisions been designated as informative. See Alphabetical Listing of Informative Decisions. To the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Reply Br. 29), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistencies associated with that requirement. See MPEP Appeal 2020-004104 Application 15/992,219 32 § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”); MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new ground of rejection. See Reply Br. 28. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 23–24. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 28), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any Appeal 2020-004104 Application 15/992,219 33 alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 28) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claim 14, and claims 15, 17, and 18 not argued separately with particularity. Claims 47–49 We also sustain the Examiner’s rejection of claim 47 reciting a light source in the single enclosure that emits visible or nonvisible light for illumination or indication, the non-visible light is infrared, ultraviolet, X- rays, or gamma rays, where the light source is couplable to the AC power cable for being powered from AC power. On this record, we are unpersuaded of error in the Examiner’s rationale for combining Sharood with Legaspi ’377 despite Appellant’s arguments to the contrary. See Appeal Br. 36–38; Reply Br. 29–33. A key aspect of the Examiner’s rationale relies on the functionality of Sharood’s monitoring system that is able to output data from an appliance connected to a power supply. See Non-Final Act. 20; Ans. 25–26. Given this functionality, the Examiner concludes that it would have been obvious to enhance a monitoring system that provides power and wireless networking to an appliance with methods for implementing detectors that can emit a light-based signal upon occurrence of an event. See id. We see no error in these findings and conclusions. Such an enhancement to add additional event signalling capability by emitting a light Appeal 2020-004104 Application 15/992,219 34 signal for visually indicating a status uses prior art elements predictably according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. To the extent Appellant contends that the Examiner’s articulated reasoning must detail how and where elements are incorporated into Sharood, and whether they are substitutes or additional components (see Appeal Br. 36–37; Reply Br. 23–33), we disagree. It is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. Keller, 642 F.2d at 425. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. And here, the Examiner’s proposed combination predictably uses prior art elements according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. That another panel of this Board found similar arguments unpersuasive in determining that Sharood and Legaspi ’377 were combinable in a related appeal involving similar subject matter only further weighs in favor of the Examiner. See Binder, Appeal 2020- 002710, at 36–37. We reach this conclusion even if Sharood already discloses features of wireless communications as Appellant suggests (see Appeal Br. 37–38) because Sharood does not disclose performing wireless communications using the particular light source as Legaspi ’377 provides. Nevertheless, Appellant’s authority for the contention that reliance on “redundant” Appeal 2020-004104 Application 15/992,219 35 advantages from a cited art combination would ostensibly preclude an obviousness conclusion of obviousness (see id.) comes from the cited non- precedential Board decisions. Not only are the facts in these cases different from those at issue here, as non-precedential decisions, they are not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B). Nor have these decisions been designated as informative. See Alphabetical Listing of Informative Decisions. To the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Reply Br. 31–32), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistencies associated with that requirement. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”); MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Appeal 2020-004104 Application 15/992,219 36 Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new ground of rejection. See Reply Br. 31. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 25–26. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 31), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 31) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claim 47, and claims 48 and 49 not argued separately with particularity. THE OBVIOUSNESS REJECTION OVER SHAROOD, LEGASPI ’377, AND RADA We also sustain the Examiner’s rejection of claim 16 reciting the WPAN is according to, or based on, ZigbeeTM, IEEE 802.15.4-2003, or Z- WaveTM standards. Appeal 2020-004104 Application 15/992,219 37 On this record, we are not persuaded of error in the Examiner’s rationale for combining Sharood, Legaspi ’377, and Rada despite Appellant’s arguments to the contrary. See Appeal Br. 39–41; Reply Br. 33– 37. A key aspect of the Examiner’s rationale relies on the functionality of the Sharood/Legaspi ’377 monitoring system that is able to output data from an appliance connected to a wireless transceiver. See Non-Final Act. 22; Ans. 26–28. Given this functionality, the Examiner concludes that, in light of Rada, it would have been obvious to enhance a monitoring system that provides power and wireless networking to an appliance with methods for a particular type of wireless signal transmission that provides for long battery life and also accessing data generated by a monitoring device’s messages. See Non-Final Act. 22; Ans. 26–28. We see no error in these findings and conclusions. In short, adding different types of wireless signal communication capabilities to provide more efficient energy usage for longer battery life as the Examiner proposes uses prior art elements predictably according to their established functions— an obvious improvement. See KSR, 550 U.S. at 417. We reach this conclusion even if Sharood already discloses features of wireless communications as Appellant suggests (see Appeal Br. 41) because Sharood does not disclose performing wireless communications using the particular wireless and wired communication methods as Rada provides. Nevertheless, as discussed above, Appellant’s authority for the contention that reliance on “redundant” advantages from a cited art combination would ostensibly preclude an obviousness conclusion (see id.), comes from the cited non-precedential Board decisions. Not only are the facts in these cases different from those at issue here, as non-precedential decisions, the cited Appeal 2020-004104 Application 15/992,219 38 Board decisions are not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B). Nor have these decisions been designated as informative. See Alphabetical Listing of Informative Decisions. We also find that Rada is analogous art despite Appellant’s arguments to the contrary. See Appeal Br. 39; Reply Br. 33–34. Prior art is analogous if it is (1) from the same field of endeavor regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. See Bigio, 381 F.3d at 1325. Therefore, contrary to Appellant’s suggestion (see Appeal Br. 39), the analogous art test does not ask whether the prior art references are analogous to each other, but rather asks whether the references are analogous to the claimed subject matter. See id.; see also Kahn, 441 F.3d at 986–87. On this record then, we see no error in the Examiner’s proposed combination. Sharood, Legaspi ’377, and Rada are from the same field of endeavor as Appellant’s invention, namely environment control. Moreover, both Sharood, Legaspi ’377, and Rada are at least reasonably pertinent to Appellant’s problem of optimizing environment control networks by using sensors communicating over wireless networks. See Spec. 15, 75. Sharood pertains to a home automation system using a radio frequency network to monitor and optimize home utilities (see Sharood ¶¶ 54–55), Legaspi ’377 pertains to appliance energy control over a wireless network using detectors to prevent appliance damage (see Legaspi ’377 ¶¶ 9–11, 61), and Rada detects appliances automatically via an wireless energy monitoring device. See Rada Abstract; ¶¶ 63–67. That another panel of this Board found similar arguments unpersuasive in determining that Sharood, Legaspi ’377, and Appeal 2020-004104 Application 15/992,219 39 Rada were combinable in a related appeal involving similar subject matter only further weighs in favor of the Examiner. See Binder, Appeal 2020- 002710, at 40–42. To the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Reply Br. 36–37), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistencies associated with that requirement. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”); MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new Appeal 2020-004104 Application 15/992,219 40 ground of rejection. See Reply Br. 36. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 4–14. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 36), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 36) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claim 16. THE OBVIOUSNESS REJECTION OVER SHAROOD AND RADA We also sustain the Examiner’s rejection of claim 23 reciting the wireless network is a WiMAX network, wherein the antenna is a WiMAX antenna and the wireless transceiver is a WiMAX modem, where the WiMAX network is according to, based on, or compatible with IEEE 802.16-2009. On this record, and despite Appellant’s arguments to the contrary (Appeal Br. 42–43; Reply Br. 37–41), we see no error in the Examiner’s reliance on Rada for at least suggesting the recited limitations, particularly Appeal 2020-004104 Application 15/992,219 41 given Rada’s teaching in paragraph 216 that messages from an energy monitoring device can be forwarded via WiMAX networks. Given this teaching, enhancing Sharood’s wireless network with WiMAX technology uses prior art elements predictably according to their established functions— an obvious improvement. See KSR, 550 U.S at 417. Although Rada does not detail the particulars the WiMAX network, the recited WiMAX aspects, including the antenna, modem, and IEEE 802.16 standard compatibility, would have nonetheless been obvious to ordinarily skilled artisans, particularly given the meaning of the term “WiMAX” in the art. See Harry Newton, NEWTON’S TELECOM DICTIONARY 999 (22d ed. 2006). That dictionary notes that “WiMAX” stands for “Worldwide Interoperability for Microwave Access,” and is a broadband wireless access solution based on standards recommended by the IEEE 802.16 working group and the European Telecommunications Standards Institute (ETSI), where the IEEE 802.16 standard is the primary basis for WiMAX. Id. According to this dictionary, a WiMAX receiver is in the form of a flat passive array antenna. Id. Given this known functionality, enhancing Sharood’s wireless network with WiMAX technology as the Examiner proposes uses prior art elements predictably according to their established functions—an obvious improvement. See KSR, 550 U.S at 417. Although the Examiner’s rejection refers to a different IEEE standard than that claimed (see Non-Final Act. 23), and the Answer refers to Legaspi ’377 that was not relied upon to reject claim 23 (see Ans. 29), we nonetheless treat any error associated with these undisputed findings as harmless given the Examiner’s proposed enhancement to Sharood that uses known WiMAX elements according to Appeal 2020-004104 Application 15/992,219 42 their established functions to achieve a predictable result—an obvious improvement. See KSR, 550 U.S at 417. That another panel of this Board found similar arguments unpersuasive in determining that Sharood and Rada were combinable in a related appeal involving similar subject matter only further weighs in favor of the Examiner. See Binder, Appeal 2020-002710, at 42–44. To the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Reply Br. 40), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistencies associated with that requirement. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”); MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Appeal 2020-004104 Application 15/992,219 43 Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new ground of rejection. See Reply Br. 3, 6, 11. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 4–14. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 39), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 39) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claim 23. THE OBVIOUSNESS REJECTION OVER SHAROOD AND KIKO Claims 19–22, 24, and 25 We also sustain the Examiner’s rejection of claims 19–22 and 24 reciting various aspects of the recited wireless network. Appeal 2020-004104 Application 15/992,219 44 Notably, the Examiner’s reliance on Kiko for teaching these particular limitations is undisputed. See Non-Final Act. 23–27; Appeal Br. 43–47; Reply Br. 41–44. Rather, this dispute turns solely on the Examiner’s rationale to combine Sharood and Kiko. Therefore, we confine our discussion to that issue. First, we find unavailing Appellant’s contention that Sharood and Kiko are non-analogous art. See Appeal Br. 43–45; Reply Br. 41–42. As previously noted, prior art is analogous if it is (1) from the same field of endeavor regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. Bigio, 381 F.3d at 1325. That is, contrary to Appellant’s suggestion (see Appeal Br. 43–44), the analogous art test does not ask whether the prior art references are analogous to each other, but rather asks whether the references are analogous to the claimed subject matter. See id.; see also Kahn, 441 F.3d at 986–87. On this record, we see no error in the Examiner’s proposed combination. First, both Sharood and Kiko are in the same field of endeavor as Appellant’s invention, namely environment control. Moreover, both Sharood and Kiko are at least reasonably pertinent to Appellant’s problem of optimizing environment control networks by using sensors communicating over wireless networks. See Spec. 15, 75. Sharood pertains to a home automation system using a radio frequency network to monitor and optimize home utilities (see Sharood ¶¶ 54–55), and Kiko pertains to monitoring and control functions for automation within a home using wireless networks (see Kiko ¶¶ 16–17, 208). Appeal 2020-004104 Application 15/992,219 45 To the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Appeal Br. 44–45; Reply Br. 44, 47), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistencies associated with that requirement. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”); MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Further, to the extent Appellant contends that obviousness cannot be concluded based on the combination of Sharood and Kiko because the same rationale is used as motivation to combine for two different claims (see Appeal Br. 45), and that a rationale is conclusory unless it specifies use advantages specific to particular claim features (see Appeal Br. 45–48; Reply Br. 42–43), we disagree. Notwithstanding the differences in recited claim features, the same advantage of the combination may apply Appeal 2020-004104 Application 15/992,219 46 nonetheless. Indeed, Kiko’s network and RF interface in all of the specific teachings respectively cited, all commonly provide the benefit of adding varied network access technologies, thus allowing access to distant network nodes to Sharood’s power monitoring system. In short, the Examiner’s proposed enhancement uses prior art elements predictably according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. We reach this conclusion even if Sharood already discloses features of various wireless communication methods as Appellant indicates (see Appeal Br. 46) because Sharood does not disclose the particular recited features that are disclosed by Kiko on which the Examiner relies. See Non-Final Act. 23– 28. Moreover, Appellant’s authority for the contention that reliance on “redundant” advantages from a cited art combination ostensibly precludes an obviousness conclusion comes from the cited non-precedential Board decisions. See Appeal Br. 46. Not only are the facts in these cases different from those at issue here, as non-precedential decisions, the cited Board decisions are not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B). Nor have these decisions been designated as informative. See Alphabetical Listing of Informative Decisions. That another panel of this Board found similar arguments unpersuasive in determining that Sharood and Kiko were combinable in a related appeal involving similar subject matter only further weighs in favor of the Examiner. See Binder, Appeal 2020-002710, at 44–49. Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new Appeal 2020-004104 Application 15/992,219 47 ground of rejection. See Reply Br. 43–44, 46. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 30–32. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 43–44), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 43–44) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claims 19–22, 24, and 25. Claims 30 and 32 Because we do not sustain the rejection of claim 26 as noted previously, we also do not sustain the rejection of claims 30 and 32 that depend from claim 26. Nor has the Examiner shown that Kiko cures those deficiencies. We, therefore, need not address Appellant’s other arguments regarding claims 30 and 32. Appeal 2020-004104 Application 15/992,219 48 THE REJECTION OVER SHAROOD AND HENDRICKSON Because we do not sustain the rejection of claims 26, 51, and 62 as noted previously, we also do not sustain the rejection of (1) claims 33–35, 37, 38, 42, 43, 45, and 46 that depend from claim 26; (2) claims 56 and 57 that depend from claim 51; and (3) claims 63 and 64 that depend from claim 62. Nor has the Examiner shown that Hendrickson cures those deficiencies. We, therefore, need not address Appellant’s other arguments regarding claims 33–35, 37, 38, 42, 43,6 45, 46, 56, 57, 63, and 64. THE REJECTION OVER SHAROOD, HENDRICKSON, AND KIKO Because we do not sustain the rejection of claim 26 as noted previously, we also do not sustain the rejection of claims 39–41 that depend from claim 26. Nor has the Examiner shown that Hendrickson and Kiko cure those deficiencies. We, therefore, need not address Appellant’s other arguments regarding claims 39–41. 6 Claim 43 is replete with alternative language that, when considered in light of the claim’s conjunctive “and” language, renders the claim’s scope ambiguous and subject to multiple plausible constructions under the claim’s broadest reasonable interpretation. See Miyazaki, 89 USPQ2d at 1211 (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”); see also MPEP § 2173.05(b) (citing Miyazaki). Although the Examiner did not reject the claim as indefinite despite this authority, we nonetheless leave that question to the Examiner to reconsider after this decision. Appeal 2020-004104 Application 15/992,219 49 THE OBVIOUSNESS REJECTION OVER SHAROOD AND MEHTA Because we do not sustain the rejection of claim 26 as noted previously, we also do not sustain the rejection of claim 36 that depends from claim 26. Nor has the Examiner shown that Mehta cures those deficiencies. We, therefore, need not address Appellant’s other arguments regarding claim 36. THE OBVIOUSNESS REJECTION OVER SHAROOD, LEGASPI ’377, AND LEGASPI ’197 We sustain the Examiner’s rejection of claim 50 reciting various aspects of a light source. Notably, the Examiner’s reliance on Legaspi ’377 for teaching these particular limitations is undisputed. See Non-Final Act. 36; Appeal Br. 53–54; Reply Br. 55–59. Rather, this dispute turns solely on the cited references’ combinability. Therefore, we confine our discussion to that issue. On this record, we see no error in the Examiner’s proposed combination. First, Appellant’s arguments regarding Hendrickson (Reply Br. 55–56) are inapposite to the Examiner’s rejection of claim 50 that does not rely on that reference. See Non-Final Act. 35–36. Second, Appellant’s combinability arguments do not squarely address claim 50 despite its inclusion in the associated heading. See Appeal Br. 53–54; Reply Br. 55– 56. Leaving these inconsistences aside, we nonetheless are unpersuaded of error in the Examiner’s proposed combination for the reasons noted previously and those indicated by the Examiner. See Non-Final Act. 35–36. To the extent Appellant contends that the Examiner’s obviousness rationale Appeal 2020-004104 Application 15/992,219 50 is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Reply Br. 58), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistencies associated with that requirement. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”); MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new ground of rejection. See Reply Br. 56–57. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 36–37. Appeal 2020-004104 Application 15/992,219 51 To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 56–57), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 56–57) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claim 50. THE OBVIOUSNESS REJECTION OVER SHAROOD AND ANSARI We also sustain the Examiner’s rejection of claims 58, 60, and 61 that recite various aspects of the device’s address to uniquely identify the device in the wireless network or Internet. Notably, the Examiner’s reliance on Ansari for teaching these particular limitations is undisputed. See Non-Final Act. 36–38; Appeal Br. 61–65; Reply Br. 67–71. Rather, this dispute turns solely on the cited references’ combinability. Therefore, we confine our discussion to that issue. On this record, we see no error in the Examiner’s proposed combination. First, we find unavailing Appellant’s contention that Sharood and Ansari are non-analogous art. Appeal Br. 61–62. Prior art is analogous if it is (1) from the same field of endeavor regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which Appeal 2020-004104 Application 15/992,219 52 the inventor is involved. See Bigio, 381 F.3d at 1325. That is, contrary to Appellant’s suggestion (see Appeal Br. 61), the analogous art test does not ask whether the prior art references are analogous to each other, but rather asks whether the references are analogous to the claimed subject matter. See id.; see also Kahn, 441 F.3d at 986–87. Here, both Sharood and Ansari are in the same field of endeavor as Appellant’s invention, namely environment control. See Ans. 41. Moreover, both Sharood and Ansari are at least reasonably pertinent to Appellant’s problem of optimizing environment control networks by use of sensors communicating over wireless networks. See Spec. 15, 75. Sharood pertains to a home automation system using a radio frequency network to monitor and optimize home utilities (see Sharood ¶¶ 54–55) and Ansari pertains to controlling endpoints for wireless home network automation (see Ansari ¶¶ 96–97, 116). Further, to the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Appeal Br. 62), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistences associated with that requirement. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”), MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Appeal 2020-004104 Application 15/992,219 53 Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Nor do we find error in the Examiner’s rationale to combine Sharood and Ansari, despite Applicant’s contention that this rationale is erroneous when it is used for different claims (see Appeal Br. 62–64). Notwithstanding the differences in recited claim features, the same advantage may apply nonetheless to the Examiner’s combination. Indeed, the relied-upon teachings associated with Ansari’s network gateway all commonly provide the benefit of making available and accessible (exposing) endpoints of a home automation system via network addressing, thus allowing greater access to Sharood’s power monitoring system. See Non- Final Act. 36–38. We see no error in these findings and conclusions. In short, the Examiner’s proposed enhancement, namely providing a network addressing scheme to increase the availability and access to monitoring capabilities, uses prior art elements predictably according to their established functions— an obvious improvement. See KSR, 550 U.S. at 417. To the extent Appellant contends that a reason to combine Ansari with Sharood is untenable because “some of the wireless technologies do not lend themselves to be used in Building Automation as described by the Sharood reference” (see Appeal Br. 63), we are not persuaded. Not only is there no persuasive evidence on this record to substantiate this conclusory assertion, Appeal 2020-004104 Application 15/992,219 54 Ansari contemplates using its wireless gateway technology in building automation as a home automation networking device. See Ansari ¶ 97; Fig. 11. We reach this conclusion even if Sharood already discloses the same advantages as Appellant contends (see Appeal Br. 63–65) because Sharood does not disclose the network addressing as Ansari provides. Nevertheless, Appellant’s authority for the contention that reliance on “redundant” advantages from a cited art combination ostensibly precludes an obviousness conclusion (see id. at 63), comes from cited non-precedential Board decisions. Not only are the facts in these cases different from those at issue here, as non-precedential decisions, the cited Board decisions are not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B). Nor have these decisions been designated as informative. See Alphabetical Listing of Informative Decisions. We reach this conclusion acknowledging that “[r]ejections 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.” KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). On this record, however, we do not find error in the Examiner’s rejections relying upon the combination of Sharood and Ansari. The Examiner finds that Sharood discloses elements from claim 1, which are further limited by dependent claims 58, 60, and 61. See Non-Final Act. 36–38. Moreover, the Examiner relies on Ansari for its teaching these further limitations, such as (1) the device being further addressable in the wireless network using distinct locally administered addresses uniquely identifying the device in the wireless network (see Non- Appeal 2020-004104 Application 15/992,219 55 Final Act. 37); (2) the digital address is a layer 3 address and is a static or dynamic Internet Protocol (IP) address (see id. at 37–38); and (3) the digital address is assigned by another device using DHCP (see id. at 38). To the extent Appellant contends that the Examiner’s articulated reasoning required any further details regarding howor where elements are incorporated into Sharood, or whether they are substitutes or additional components (see Appeal Br. 50–51), we are not persuaded. It is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332. Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. Keller, 642 F.2d at 425. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. We find unavailing Appellant’s contentions that the Examiner’s rationale to combine Sharood with Ansari ostensibly lacks rational underpinning. See Appeal Br. 63–65. After arguing that the combination with Ansari is conclusory and fails to explain the combination, Appellant then contends the combination adds the functionality of an addressing mechanism, and that such a combination would feature a “trivial, inherent, and self-evident” motivation to combine that lacks rational underpinning (see Appeal Br. 64–65). Appellant provides no persuasive evidence proving this assertion. Such unsubstantiated attorney argument has low probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Nor do we find availing Appellant’s contention that the Examiner’s explanation of Ansari’s paragraph 1 is misrepresentative. See Appeal Br. Appeal 2020-004104 Application 15/992,219 56 65. The Examiner cites Ansari’s paragraph 1 as supporting the obviousness conclusion based on combining Sharood with Ansari. Therefore, the Examiner’s explanation merely provides evidence supporting the combination’s rationale. The Examiner concludes that it would have been obvious to combine Sharood and Ansari to expose the presence and functionalities of associated endpoints of the home network via a wide area network. See Non-Final Act. 37. Indeed, Ansari’s gateway device exposes the presence and functionalities of one or more associated end point devices via a wide area network. Ansari ¶ 1. Therefore, we are not persuaded that the Examiner erred in citing and relying on Ansari for concluding obviousness based on the combination of Sharood and Ansari. That another panel of this Board found similar arguments unpersuasive in determining that Sharood and Ansari were combinable in a related appeal involving similar subject matter only further weighs in favor of the Examiner. See Binder, Appeal 2020-002710, at 54–61. Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new ground of rejection. See Reply Br. 70. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and conclusions made in connection with the proposed combination. See Ans. 41–43. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 70), that is a petitionable matter that is not before us. Appeal 2020-004104 Application 15/992,219 57 See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 70) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claims 58, 60, and 61. THE REJECTION OVER SHAROOD, ANSARI, AND WONG We also sustain the Examiner’s rejection of claim 59 that recites the digital address is a Media Access Control (MAC) layer address that is MAC- 48, Extended Unique Identifier (EUI) EUI-48, or EUI-64 address type. As a preliminary matter, Appellant’s statement that claim 59 was ostensibly rejected over Sharood and Wong (Appeal Br. 66) is incorrect: the Examiner rejected claim 59 over Sharood, Ansari, and Wong. See Non- Final Act. 38–39. Turning to the rejection, the Examiner’s reliance on Wong for teaching the particular limitations of claim 59 is undisputed. See Non-Final Act. 38–39; Appeal Br. 66–70; Reply Br. 72–75. Rather, this dispute turns solely on the cited references’ combinability. Therefore, we confine our discussion to that issue. On this record, we find unavailing Appellant’s contention that Sharood and Wong are non-analogous art. See Appeal Br. 66–67; Reply Br. 72. Prior art is analogous if it is (1) from the same field of endeavor Appeal 2020-004104 Application 15/992,219 58 regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. Bigio, 381 F.3d at 1325. That is, contrary to Appellant’s suggestion (see Appeal Br. 66), the analogous art test does not ask whether the prior art references are analogous to each other, but rather asks whether the references are analogous to the claimed subject matter. See Bigio, 381 F.3d at 1325; see also Kahn, 441 F.3d at 986–87. On this record, we see no error in the Examiner’s proposed combination. First, both Sharood and Wong are in the same field of endeavor as Appellant’s invention, namely environment control. Moreover, both Sharood and Wong are at least reasonably pertinent to Appellant’s problem of optimizing environment control networks by using sensors communicating over wireless networks. See Spec. 15, 75. Sharood pertains to a home automation system using a radio frequency network to monitor and optimize home utilities (see Sharood ¶¶ 54–55), and Wong pertains to (1) measuring AC current usage of a load device, and (2) transmitting values based on the measurements over a Wi-Fi network to configure, modify and administer energy settings for more efficient operations (see Wong ¶¶ 14, 42). To the extent Appellant contends that the Examiner’s obviousness rationale is inconsistent with the patentably-distinct inventions articulated in a restriction requirement made during prosecution of the present application (see Appeal Br. 67), such a contention is unavailing. The propriety of the Examiner’s restriction requirement that was made during prosecution is a petitionable matter that is not before us, as are objections regarding procedural inconsistences associated with that requirement. See MPEP Appeal 2020-004104 Application 15/992,219 59 § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”), MPEP § 1002.02(c) (requiring that Technology Center Directors decide petitions from an Examiner’s final decision requiring restriction in patent applications). Therefore, to the extent there may be inconsistencies between the Examiner’s restriction requirement and obviousness rejection, the Examiner’s restriction requirement is not before us, nor are we bound by it. Rather, only the Examiner’s obviousness rejection is before us—a rejection that is (1) articulated in the Non-Final Office Action from which this appeal was taken, and (2) based principally on the cited prior art. Nor are we persuaded that the Examiner’s rationale to combine the cited references is improper. Appellant’s contention that the Examiner’s rationale to combine Sharood and Wong misrepresents the cited portion of Wong and fails to explain why and how the provided benefit of the combination relates to the claimed features (see Appeal Br. 68) are unavailing. The rationale to combine Wong with Sharood cites Wong’s communication module (described later in Wong as a sensor) that is operative to transmit AC power values calculated from measured AC current by a measurement module in accordance with a Wi-Fi wireless networking standard to a wireless network access point. See Wong ¶¶ 14, 54. The Examiner reasons that combining Wong with Sharood is motivated by enhancements from assigning unique addresses to sensors to transmit the values to a wireless network access point. See Non-Final Act. 38–39; Ans. 43–45. Given this reasoning in view of the cited portions of Wong, we see Appeal 2020-004104 Application 15/992,219 60 no error in the Examiner’s rationale. Further, the Examiner’s rationale provides an enhancement to Sharood’s appliance monitoring device by assigning unique addresses to sensors, as Wong provides. See Non-Final Act. 38–39. Because claim 59 recites features of a MAC layer address, and Wong teaches assigning MAC addresses to sensors, we find that the reason to combine Wong with Sharood has sufficient rational underpinning that ties the enhancement of Wong’s unique MAC addresses to Sharood’s appliance monitoring sensor. We reach this conclusion even if the Sharood/Ansari system already discloses the same advantages as Appellant contends (see Appeal Br. 68–69) because Sharood does not disclose the MAC addressing as Wong provides. Nevertheless, Appellant’s authority for the contention that reliance on “redundant” advantages from a cited art combination would preclude a finding of obviousness (see id. at 69), comes from the cited non-precedential Board decisions. Not only are the facts in these cases different from those at issue here, as non-precedential decisions, they are not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B). Nor have these decisions been designated as informative. See Alphabetical Listing of Informative Decisions. Nor are we persuaded by Appellant’s contentions that the rationale to combine Sharood with Wong is improper for referencing a different network scheme than that referenced in connection with the rationale articulated for claim 58 from which claim 59 depends, and referencing different layers of the open systems interconnection (OSI) layer stack. See Appeal Br. 69. To the extent Appellant suggests that a wide area network is somehow incompatible or inoperable with a local area network, and that addressing Appeal 2020-004104 Application 15/992,219 61 schemes at different OSI layers are also somehow incompatible or inoperable together, Appellant provides no persuasive evidence proving these assertions. Such unsubstantiated attorney argument has low probative value. See Geisler, 116 F.3d at 1470. Further, to the extent Appellant contends that the Examiner’s articulated reasoning requires detailing how added sensors are incorporated into Sharood and what added services are provided by added elements (see Appeal Br. 70), we are not persuaded. It is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. Keller, 642 F.2d at 425. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. That another panel of this Board found similar arguments unpersuasive in determining that Sharood and Legaspi ’377 were combinable in a related appeal involving similar subject matter only further weighs in favor of the Examiner. See Binder, Appeal 2020-002710, at 61– 67. Nor are we persuaded by Appellant’s contentions that the Examiner’s responses to arguments raised in the Appeal Brief in the Examiner’s Answer affect the grounds of rejection upon which this appeal is taken, such that sustaining the Examiner’s rejection would ostensibly constitute a new ground of rejection. See Reply Br. 74. Here, the Examiner’s Answer explains why the rejection is proper based on the Examiner’s findings and Appeal 2020-004104 Application 15/992,219 62 conclusions made in connection with the proposed combination. See Ans. 43–45. To the extent Appellant contends that the Examiner’s explanation in the Answer constitutes an undesignated new ground of rejection in the Answer (see Reply Br. 74), that is a petitionable matter that is not before us. See 37 C.F.R. § 41.40(a); see also MPEP § 1207.03(b). Where, as here, Appellant did not file such a petition, Appellant’s contentions regarding any alleged new ground of rejection in the Answer are waived. See 37 C.F.R. § 41.40(a). Given this waiver, Appellant’s contentions that our sustaining the Examiner’s rejection in light of the Examiner’s Answer should be considered a new ground of rejection (Reply Br. 74) are unpersuasive. Therefore, we are not persuaded that the Examiner erred in rejecting claim 59. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 11, 12, 26–29, 31, 44, 51–55, 62, 65, 66 102(b) Sharood 1–9, 65 11, 12, 26– 29, 31, 44, 51–55, 62, 66 10, 13–15, 17, 18, 47–49 103 Sharood, Legaspi ’377 10, 13–15, 17, 18, 47– 49 16 103 Sharood, Legaspi ’377, Rada 16 23 103 Sharood, Rada 23 Appeal 2020-004104 Application 15/992,219 63 19–22, 24, 25, 30, 32 103 Sharood, Kiko 19–22, 24, 25 30, 32 33–35, 37, 38, 42, 43, 45, 46, 56, 57, 63, 64 103 Sharood, Hendrickson 33–35, 37, 38, 42, 43, 45, 46, 56, 57, 63, 64 39–41 103 Sharood, Hendrickson, Kiko 39–41 36 103 Sharood, Mehta 36 50 103 Sharood, Legaspi ’377, Legaspi ’197 50 58, 60, 61 103 Sharood, Ansari 58, 60, 61 59 103 Sharood, Ansari, Wong 59 Overall Outcome 1–10, 13– 25, 47–50, 58–61, 65 11, 12, 26– 46, 51–57, 62–64, 66 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation