SIPCO, LLC et al.Download PDFPatent Trials and Appeals BoardSep 28, 20212021004072 (P.T.A.B. Sep. 28, 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. 90/014,178 08/02/2018 6437692 001264-0124-505 6269 7590 09/28/2021 DR. GREGORY J. GONSALVES 2216 BEACON LANE FALLS CHURCH, VA 22043 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/28/2021 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 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. 90/014,177 08/02/2018 6437692 001264-0124-502 9863 7590 09/28/2021 DR. GREGORY J. GONSALVES 2216 BEACON LANE FALLS CHURCH, VA 22043 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/28/2021 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 SIPCO, LLC Patent Owner and Appellant ____________ Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 Technology Center 3900 ____________ Before ERIC B. CHEN, BRYAN F. MOORE, and MICHAEL J. ENGLE, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-002134 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 2 Pursuant to 35 U.S.C. §§ 134(b) and 306, Patent Owner1 appeals from the final rejection of claims 24–26 and 30. Claims 1–23, 27–29, 31, 33, 36, 39–54, 58, and 60–64 were not subject to reexamination. Claims 32, 34, 37– 38, 55–57, and 59 were cancelled in a previous inter partes review proceeding. A telephonic oral hearing was held on August 25, 2021. The record will include a written transcript of the oral hearing. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Reexamination Proceedings Two requests for ex parte reexamination of U.S. Patent No. 6,437,692 B1 (“the ’692 patent”) were filed on August 2, 2018, and assigned Reexamination Control Nos. 90/014,177 and 90/014,178. The reexamination proceedings were merged. The ’692 patent, titled “System and Method for Monitoring and Controlling Remote Devices,” issued August 20, 2002 to Thomas D. Petite and Richard M. Huff, based on Application No. 09/439,059, filed November 12, 1999. Claimed Subject Matter The claims are directed to monitoring a variety of environmental or other conditions within a defined remotely located region. (Abstract.) 1 Patent Owner identifies the real party in interest as SIPCO, LLC. (Appeal Br. 3.) Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 3 Related Litigation The ’692 patent has been asserted in Emerson Electric Co. v. SIPCO, LLC, No. 1:15-cv-319 (N.D. Ga. Jan. 30, 2015) and SIPCO, LLC v. Emerson Electric Co., No. 1:16-cv-02690 (N.D. Ga. July 26, 2016). The two cases have been consolidated. The ’692 patent was also subject to the following petitions for inter partes review: (i) FieldComm Group v. SIPCO, LLC, No. IPR2015-00668 (PTAB Feb. 2, 2015) (institution denied); (ii) Emerson Electric Co. v. SIPCO, LLC, No. IPR2017-00308 (PTAB Nov. 21, 2016) (institution denied); (iii) Emerson Electric Co. v. SIPCO, LLC, No. IPR2017-00333 (PTAB Nov. 25, 2016) (institution denied); and (iv) Emerson Electric Co. v. SIPCO, LLC, No. IPR2017-00359 (PTAB Nov. 30, 2016), aff’d, 826 F. App’x 904 (Fed. Cir. 2020), in which claims 1, 3–8, 11–14, 24–31, 42, 43, 46–49, 51–54, and 60–64 were not shown to be unpatentable, and claims 32, 34, 37, 38, 55–57, and 59 were shown to be unpatentable. The Claims Claim 24 is illustrative of the claimed subject matter, and is reproduced below with disputed limitations in italics: 24. A method for controlling a system comprising: remotely collecting data from at least one sensor; processing the data into a radio-frequency (RF) signal; transmitting the RF signal, via a relatively low-power RF transceiver, to a gateway; translating the data in the RF signal into a network transfer protocol; sending the translated data to a computer, wherein the computer is configured to appropriately respond to the data Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 4 generated by the at least one sensor by generating an appropriate control signal; sending the control signal via the network to the gateway; translating the control signal from a network transfer protocol into a RF control signal; transmitting the RF control signal; receiving the RF control signal; translating the received RF control signal into an analog signal; and applying the analog signal to an actuator to effect the desired system response. REFERENCES Name Reference Date Jenney et al. US 5,897,607 Apr. 27, 1999 Simionescu et al. US 5,963,650 Oct. 5, 1999 Perlman et al. US 6,094,525 July 25, 2000 Ardalan et al. US 6,396,839 B1 May 28, 2002 Claim 24 stands rejected 35 U.S.C. § 103 as being unpatentable over Simionescu and Ardalan. Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Simionescu, Ardalan, and Perlman. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Simionescu, Ardalan, and Jenney. Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 5 OPINION § 103 Rejection—Simionescu We are persuaded by Patent Owner’s arguments (Reply Br. 8, 20) that Simionescu does not teach the limitation “sending the control signal via the network to the gateway,” as recited in independent claim 24. The Examiner found that user applications (APPs) 112 of Simionescu, which send data requests to data collection system (DCS) 100, correspond to the limitation “computer . . . generating an appropriate control signal.” (Final Act. 50.) The Examiner further found that APPs 112, data acquisition devices (DA) 102, and DCS 100 of Simionescu, which are connected via RF links 114 or conventional telephone links 116, collectively correspond to the limitation “sending the control signal via the network to the gateway.” (Final Act. 13; see also Ans. 14–15 (additional discussion of finding).) In particular, the Examiner found “the control signal is sent from the APP (e.g. APP 1) to the DCS (gateway) via . . . network (e.g. conventional telephone links, RF or the Internet).” (Ans. 14.) We do not agree with the Examiner’s findings. Simionescu relates to telemetry devices. (Col. 1, l. 8.) Figure 1 of Simionescu illustrates a block diagram of a data collection system, which includes data collection system (DCS) 100, which can be a server, mainframe computer, personal computer, or specialized hardware (col. 5, ll. 58–62), data acquisition devices (DA) 102, which can be a sensor device (e.g., weather station or ground water monitor) (col. 6, ll. 1–7), and user applications (APPs) 112 (col. 5, l. 67 to col. 6, l. 1). Simionescu explains that “remote APPs 112 are connected to processor 104 [of DCS 100] via RF Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 6 links 114 or conventional telephone links 116.” (Col. 6, ll. 18–21.) As examples, Simionescu explains that “a weather station would have multiple sensors, such as wind indicators, ground water detectors, [or] thermometers” and “in an agricultural environment, a weather station can be used by one application to control irrigation equipment.” (Col. 10, ll. 37–41.) In general, Simionescu explains that “a user application [APP 112] can issue a command or query to one data acquisition device [DA 102].” (Col. 5, ll. 48–49.) In particular, Simionescu explains that “[w]hen an APP 112 requests a meter reading, it uses a read request to the DCS 100.” (Col. 9, ll. 54–55.) Similarly, Simionescu explains that “a meter reading may be initiated by the first APP 112 to request data for a billing period” and “[w]hen the APP 112 request[s] meter data, the DCS 100 sends a command to the DA 102 which in turn commands the I/O device to transfer the meter data from all of the meters to its primary cache 202.” (Col. 10, ll. 7–12.) Although the Examiner cited to the “data request” of Simionescu, such data request being sent from APP 112 to DCS 100, the Examiner has provided insufficient evidence to support a finding that Simionescu teaches the limitation “sending the control signal via the network to the gateway.” Because Simionescu explains that: (i) “[w]hen an APP 112 requests a meter reading, it uses a read request to the DCS 100” and (ii) “[w]hen the APP 112 request[s] meter data, the DCS 100 sends a command to the DA 102,” Simionescu cannot teach the limitation “sending the control signal via the network to the gateway.” In particular, the signal of Simionescu sent from APP 112 to DCS 100 is a request for DCS 100 to act, rather than a “control signal” from APP 112 to DA 102, as claimed. To the extent the Examiner Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 7 considers Simionescu’s command signal from DCS 100 to be a “control signal,” such command signal originates from DCS 100, rather than APP 112. Moreover, the Examiner has not demonstrated that such command signal from DCS 100 is transmitted via a “gateway,”2 as required by claim 24. Thus, on this record, the Examiner has not demonstrated that Simionescu teaches the limitation “sending the control signal via the network to the gateway.” Accordingly, we are persuaded by Patent Owner’s arguments, as follows: The Examiner did not identify a control signal in Simionescu that is generated remotely and sent via a first network, a gateway, a second (radio frequency) network, and a digital/analog translator to an actuator. Rather, the Examiner construed the claimed “control signal” to encompass mere data that is sent to and used by the DCS [100] and DA [102] to generate a control signal locally. (Reply Br. 8.) Simionescu explicitly states that “the DCS 100 sends a command to the DA 102, which in turn commands the I/O device to transfer the meter data from all the meters to its primary cache 202.” Thus, the DCS 100 and the DA 102—not the APP—sends commands to the I/O device. (Id. at 20 (citations and emphasis omitted).) 2 Consistent with the ’692 patent, one technical definition of “gateway” is “[a] device that connects networks using different communications protocols so that information can be passed from one to the other.” MICROSOFT® COMPUTER DICTIONARY 508 (5th ed. 2002). Thus, the broadest reasonable interpretation of “gateway” would not encompass data collection system (DCS) 100 of Simionescu, which is “a server, but may be any suitable system such as a mainframe computer, personal computer, specialized hardware, etc.” (Col. 5, ll. 61–62.) Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 8 Therefore, we do not agree with the Examiner that Simionescu teaches the limitation “sending the control signal via the network to the gateway.” Accordingly, we do not sustain the rejection of independent claim 24 under 35 U.S.C. § 103. § 103 Rejection—Simionescu, Ardalan, and Perlman We do not sustain the rejection of claims 25 and 26 under 35 U.S.C. § 103 over Simionescu, Ardalan, and Perlman for the same reasons discussed previously with respect to the rejection of claim 24 under 35 U.S.C. § 103 over Simionescu and Ardalan. § 103 Rejection—Simionescu, Ardalan, and Jenney We do not sustain the rejection of claim 30 under 35 U.S.C. § 103 over Simionescu, Ardalan, and Jenney for the same reasons discussed previously with respect to the rejection of claim 24 under 35 U.S.C. § 103 over Simionescu and Ardalan. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 24 103 Simionescu, Ardalan 24 25, 26 103 Simionescu, Ardalan, Perlman 25, 26 30 103 Simionescu, Ardalan, Jenney 30 Overall Outcome 24–26, 30 REVERSED Appeal 2021-004072 Reexamination Control 90/014,177 and 90/014,178 (merged) Patent 6,437,692 B1 9 PATENT OWNER: DR. GREGORY J. GONSALVES 2216 BEACON LANE FALLS CHURCH, VA 22043 THIRD PARTY REQUESTER: ROPES & GRAY LLP PRUDENTIAL TOWER IPRM DOCKETING-FLOOR 43 800 BOYLSTON STREET BOSTON, MA 02199-3600 Copy with citationCopy as parenthetical citation