SIPCO, LLC et al.

Patent Trials and Appeals Board

Sep 28, 2021

2021004072 (P.T.A.B. Sep. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
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

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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.)
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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
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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.

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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
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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
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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.)
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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
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Patent 6,437,692 B1

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PATENT OWNER:
DR. GREGORY J. GONSALVES
2216 BEACON LANE
FALLS CHURCH, VA 22043

THIRD PARTY REQUESTER:

ROPES & GRAY LLP
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