VIVINT INC (ASSIGNEE) et al.

Patent Trials and Appeals Board

May 4, 2020

2020001620 (P.T.A.B. May. 4, 2020)

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.
90/020,115 08/02/2017 6717513 6717513 3750.021REX5 8511
26111 7590 05/04/2020
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/04/2020 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 VIVINT, INC.,
WILLIAM H. MANDIR SUGHRUE MION PLLC (3RD PTY REQ.) and
SUGHRUE MION PLLC (GENERAL)
____________________

Appeal 2020-001620
Reexamination Control 90/020,1151
Patent No. US 6,717,513
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1–21. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.
The ’513 Patent issued to Sandelman on April 6, 2004. The ’513
Patent concerns monitoring remote electrical and/or mechanical equipment.
A state of at least one parameter of at least one piece of remote equipment is

1 Appellant states that the real party in interest is Vivint, Inc. Appeal Br. 7.
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determined. A message indicative of that state is communicated to a
computer server as an incoming message. A user is able to remotely
configure or modify a user-defined message profile containing outgoing
message routing instructions. If the incoming message is determined to be an
exception message, at least one outgoing exception message is forwarded
based on the incoming message to at least one user-defined communication
device specifiable in the user-defined message profile. ’513 Patent, col.
3:24–43.
Claim 1 is exemplary of the claims on appeal:
1. A method of monitoring and controlling remote
equipment, comprising the steps of:
a) determining a state of at least one parameter of at least
one piece of the remote equipment;
b) communicating a message indicative of the state from
the piece of remote equipment to a computer server as an
incoming message;
c) enabling a user to remotely configure or modify a
user-defined message profile containing outgoing message
routing instructions, the user-defined message profile being
storable on the computer server;
d) enabling a user to remotely send command messages
to the remote equipment via the computer server to remotely
control the remote equipment;
e) determining whether an incoming message is an
incoming exception message indicative of improper operation
of the piece of remote equipment;
f) if it is determined in step e) that an incoming message
is an incoming exception message, forwarding at least one
outgoing exception message based on the incoming message to
at least one user-defined communication device specifiable in
the user-defined message profile, wherein the user can remotely
configure or modify the user-defined message profile by
remotely accessing the computer server.
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The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Shetty et al. US 5,808,907 Sept. 15, 1998
Joao US 5,917,405 June 29, 1999
Garton US 5,134,644 July 28, 1992
Cheng US 6,970,081 B1 Nov. 29, 2005

Throughout this decision, we make reference to Appellant’s Brief
(“Appeal Br.,” filed May 29, 2019), the Reply Brief (“Reply Br.,” filed
December 23, 2019), the Final Office Action appealed from (“Final Act.,”
mailed October 30, 2018), and the Examiner’s Answer (“Ans.,” mailed
October 21, 2019) for their respective details.

REJECTIONS
Claims 1–7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shetty and Joao.
Claims 8–13 and 15–21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shetty, Joao, and Garton.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shetty, Joao, Garton, and Cheng.

ISSUES
Appellant’s arguments present us with the following issues:
1. Does the combination of Shetty and Joao disclose a radio
transmitter?
2. Does the combination of Shetty and Joao teach or suggest
configuring or modifying a message profile?
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3. Would the proposed combination of Shetty and Joao (with or
without Garton or Cheng) change the principle of operation of Shetty?
4. Does the combination of Shetty, Joao, and Garton teach or suggest
an interface unit in bi-directional communication with a piece of remote
equipment?
5. Did the Examiner err in construing “message generating means”?
6. Does the combination of Shetty, Joao, Garton, and Cheng teach or
suggest an interface unit periodically generating a normal status message
indicative of the proper operation of a piece of equipment to which a sensor
is connected?
7. Did the Examiner err in finding that a substantial new question of
patentability (“SNQ”) exists?

PRINCIPLES OF LAW
Patent statute 35 U.S.C. § 302 reads, in relevant part, as follows:

Any person at any time may file a request for
reexamination by the Office of any claim of a patent on the
basis of any prior art cited under the provisions of section 301.
The request must be in writing and must be accompanied by
payment of a reexamination fee established by the Director
pursuant to the provisions of section 41. The request must set
forth the pertinency and manner of applying cited prior art to
every claim for which reexamination is requested.

Patent statute 35 U.S.C. § 303(a) reads as follows:

(a) Within three months following the filing of a request
for reexamination under the provisions of section 302, the
Director will determine whether a substantial new question of
patentability affecting any claim of the patent concerned is
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raised by the request, with or without consideration of other
patents or printed publications. On his own initiative, and any
time, the Director may determine whether a substantial new
question of patentability is raised by patents and publications
discovered by him or cited under the provisions of section 301
or 302. The existence of a substantial new question of
patentability is not precluded by the fact that a patent or printed
publication was previously cited by or to the Office or
considered by the Office.

Patent statute 35 U.S.C. § 304 reads, in relevant part, as follows:

If, in a determination made under the provisions of
subsection 303(a), the Director finds that a substantial new
question of patentability affecting any claim of a patent is
raised, the determination will include an order for
reexamination of the patent for resolution of the question.

The Manual of Patent Examining Procedure (MPEP) § 2242 further
explains what constitutes an SNQ:
[An SNQ exists as to a claim] unless the same question of
patentability has already been: (A) decided in a final holding of
invalidity by a federal court in a decision on the merits
involving the claim, after all appeals; (B) decided in an earlier
concluded examination or review of the patent by the Office; or
(C) raised to or by the Office in a pending reexamination or
supplemental examination of the patent. . . .
An earlier concluded examination or review of the patent
is: (A) the original examination of the application which
matured into the patent; (B) the examination of the patent in a
reissue application that has resulted in a reissue of the patent;
(C) the examination of the patent in an earlier concluded
reexamination or supplemental examination; (D) the review of
the patent in an earlier concluded trial by the Patent Trial and
Appeal Board, such as a post-grant review, inter partes review,
or covered business method review of the patent; or (E) any
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other contested Office proceeding which has been concluded
and which involved the patent.

MPEP § 2242(I) (9th ed. Rev. 08.2017, Jan. 2018).
Section 2242 further indicates that “a prior art patent . . . raises a
[SNQ] where there is a substantial likelihood that a reasonable examiner
would consider the prior art patent . . . important in deciding whether or not
the claim is patentable” and, if so, “the examiner should find ‘a [SNQ]
unless the same question of patentability has already been decided as to the
claim in a final holding of invalidity by a federal court or by the Office in an
earlier concluded examination or review of the patent.” MPEP § 2242(I)(b)
(emphasis added).
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
§ 103(a) (2000)). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
If the proposed modification or combination of the prior art would
change the principle of operation of the prior art invention being modified,
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then the teachings of the references are not sufficient to render the claims
prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959).
Under 35 U.S.C. § 112(f) and pre-AIA 35 U.S.C. § 112, sixth
paragraph, one may use means-plus-function language in a claim, rather than
reciting a specific structure for performing a claimed function, and such
language “restrict[s] the scope of coverage to only the structure, materials, or
acts described in the specification as corresponding to the claimed function
and equivalents thereof.” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1347 (Fed. Cir. 2015).
ANALYSIS
Claim Construction
Appellant argued at the oral hearing that the ’513 patent has now
expired,2 and that, as a result, the Board should apply the claim construction
standard set forth in Phillips v. AWH Corp.3 rather than the “broadest
reasonable interpretation” standard. Tr. 3.
During reexamination proceedings of unexpired patents, the Board
uses the “broadest reasonable interpretation consistent with the
specification” standard. In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir.
2011). See In re CSB-System Int’l, Inc., 832 F.3d 1335 (Fed. Cir. 2016).
After a patent has expired, claims are to be construed under the Phillips
“plain meaning” standard, in light of the intrinsic record. Phillips, 415 F.3d
at 1312–15. The broader standard is employed with respect to an unexpired
patent because a patent owner may amend claims to narrow their scope,

2 U.S. Patent No. 6,717,513 expired as of November 2, 2019.
3 415 F.3d 1303 (Fed. Cir. 2005).
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recourse which is not available if the patent is expired. CSB-System, 832
F.3d at 1341; In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007).
At the oral hearing, Appellant cited the district court’s recent claim
construction decision in Vivint, Inc. v. Alarm.com Inc., Case No. 2:15-cv-
392 (D. Utah, Mar. 6, 2020) (“Memorandum Decision”), a case concerning
U.S. Patent No. 6,462,654 (“the ’654 Patent”), asserted to have the same
specification as the ’513 patent. Tr. 3. In that claim construction decision,
the district court construed the claim term “message profile” in the manner
argued by Vivint, as a “data record including multiple routing instructions
configurable to specify to which communication devices an outgoing
message can be routed in response to an incoming message.” Memorandum
Decision, p. 22.
The district court’s opinion, having restated Vivint’s argument for its
proposed construction, states only that “[h]aving reviewed the specifications
and the criticisms of the prior art, the court is persuaded that ‘devices’
should be plural.” Memorandum Decision, p. 22.
Appellant did not argue, either in the principal Appeal Brief, the
Reply Brief, or at the oral hearing, that any specific claim construction done
by the Examiner was erroneous or should be changed because the ’513
Patent is now expired. Accordingly, we perceive no need to revisit any claim
construction done by the Examiner during prosecution.

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Rejection of claims 1–7 over Shetty and Joao
Appellant argues that the Examiner erred in finding that Shetty
inherently discloses a radio transmitter that relays data “over a radio
datalink” or “via radio links” to a server. Appeal Br. 24–25. Appellant
contends that the Examiner does not make clear why the claimed features
would necessarily flow from Shetty. Appeal Br. 25.
Appellant further asserts that the Examiner erred in finding the claim
terms “remote” and “over/via a radio data line” to be inherently taught.
Appeal Br. 24. Appellant provides no evidence, or even attorney argument,
beyond these bare assertions.
We are not persuaded that the Examiner erred. The Examiner finds,
and we agree, that Shetty explicitly discloses transmission of data “over a
radio datalink” or “via radio links.” Shetty teaches that “events stored in the
event database may be received from the on-board information manager 120
in any of a number of methods, i.e., over a radio datalink, a satellite datalink,
or similar method.” Shetty col. 2:23–27. “At a second work site, the data is
collected at a second work station 404 via radio links.” Shetty col. 3:59–61.
We therefore agree with the Examiner’s finding that a radio transmitter is
suggested by Shetty’s teaching of a “radio datalink” or “radio links.” Ans.
44.
Appellant contends that the Examiner improperly combines the
embodiments illustrated in Figure 1 and Figure 4 of Shetty. Appellant argues
that the Examiner did not explain how or why the two embodiments would
be combined, and did not provide “articulated reasoning with some rational
underpinning.” Appeal Br. 28.
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We do not agree with Appellant’s argument. The Examiner explains
that Figure 4 of Shetty shows a computer network. We agree with the
Examiner that one of ordinary skill would understand that multiple
computers communicate in such a network. It would have been obvious to
have a user interface on one computer in communication with another
computer, according to known methods, to yield a predictable result. Ans.
45–46.
Appellant’s argument that the Examiner erroneously found “a user on
one computer modifying a profile on another computer” to be inherent in
Shetty is not persuasive because the Examiner did not rely upon inherency.
The Examiner concluded that such modification would have been obvious.
Ans. 46.
Appellant’s expert Denning opines that Shetty teaches a user interface
110 that allows a user to access the user profile database, but that Shetty
does not teach either (a) configuring a message profile or (b) remote
configuration or remote modification of a user-defined message profile, as
each of the independent claims (1, 5, 7, 8, 15, 19, and 21) recites. Denning
Decl. ¶ 61.
We have considered the Denning Declaration, and we do not agree
that Shetty does not teach configuration or modification. The Examiner finds
that “Shetty discloses ‘the user can remotely configure or modify the user-
defined message profile by remotely accessing the computer server.’” Ans.
5. In Shetty, “a user interface 110 allows a user to access both the user
profile database 106 and the event database 108. The user interface 110 also
allows the user to input information relating to the fleet or machine data.”
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Ans. 5; Shetty col. 2:34–37. In Shetty, “users can ‘access the data stored on
the third work station 406 . . . via first and second remote work stations 420,
422.” Ans. 5; Shetty col. 4:8–10. We further agree with the Examiner’s
conclusion that, to the extent that Shetty does not explicitly teach a user on
one computer configuring or modifying a profile in the user profile database
(which is remotely located on another computer), such configuration or
modification would have been obvious. Ans. 5–6. Shetty discloses that its
system is customizable, adaptable for the needs of a particular installation,
and offers multiple options for users: “different persons, for example the
operator, the owner, etc. . . . , may have need for different information.”
Shetty col. 1:22–23. Because Shetty’s Figure 1 illustrates user interface 110,
mobile machine 118, and other remote elements, outside the dotted line
containing the databases 104, 106, and 108, we agree with the Examiner that
one skilled in the art would understand that user interface 110 is remote from
the databases. We agree with the Examiner’s reasoning that one skilled in
the art would have combined the user interface 110 with computer network
412, and/or remote work stations 420, 422, according to known methods, to
achieve the predictable result of interfacing multiple computers. Ans. 6.
Appellant’s argument that the Examiner failed to explain how and
why one would combine Shetty and Joao is not persuasive. Appeal Br. 30.
The Examiner finds that Joao teaches a method of monitoring and
controlling remote equipment, and teaches enabling a user to remotely send
command messages to the remote equipment via the computer server. Final
Act. 8. The Examiner concludes that it would have been obvious to modify
Shetty in view of the teachings of Joao because the modification would
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“allow a user to remotely respond to the received monitoring messages
already disclosed by Shetty or to simply enable the equipment owner to
secure the remote equipment as desired.” Final Act. 9. We further agree with
the Examiner that Shetty and Joao qualify as analogous art, because both
references are reasonably pertinent to the problem faced by the inventor.
Ans. 47.
Appellant next contends that the proposed combination of Shetty and
Joao would change the principle of operation of Shetty, because Shetty
employs batch processing, whereas Joao operates in real-time “such that
only one notification/message is sent at a time.” Appeal Br. 32. “[B]ecause
of Shetty’s batch processing, the combined system would not satisfy the
desire alleged by the Examiner ‘to simply enable the equipment owner to
secure the remote equipment as desired.’” Appeal Br. 38.
We are not persuaded that the Examiner erred in combining Shetty
and Joao. We agree with the Examiner that the asserted combination of
references does not propose to bodily incorporate the system of Joao into the
system of Shetty. Ans. 50. Rather, the Examiner’s asserted combination
would simply have allowed Shetty’s batch mode system to secure the remote
equipment as desired, and to allow a user to send a command message to the
equipment, as taught by Joao. Id. We agree with the Examiner that
Appellant’s assertion that Joao’s control messages would be delivered
“perhaps at midnight or 2 AM” is mere speculation. As the Examiner points
out, Shetty teaches that “[i]f the events correspond to the events defined in
the profile, then the user is notified.” Ans. 50; Shetty col. 3:41–42. We agree
with the Examiner’s finding that Joao teaches ways to “provide for
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immediate, as well as for a deferred, control” as desired for a particular
application. Ans. 51; Joao col. 73:56–57.
In reply, Appellant continues to argue that the Examiner fails to
articulate a proper rationale to combine Shetty and Joao (Reply Br. 7–8).
Appellant’s argument is not persuasive, because Appellant continues to rely
on the allegation that the Examiner proposes to convert Shetty from batch
processing to real-time operation. Reply Br. 7. As emphasized supra, the
Examiner’s combination of references does not propose such a modification
of Shetty. See Ans. 48; Final Act. 8–9.
Appellant’s argument that the disparate teachings of Shetty and Joao
are not obvious to combine is not persuasive. Appeal Br. 39–40. Appellant
describes Shetty as a “warning manager 100 [that] provides a method for
providing information relating to a mobile machine in a fleet of mobile
machines.” Appeal Br. 39. Appellant then characterizes Joao as a control
apparatus for controlling components of a vehicle. Appeal Br. 40. Appellant
then alleges that the system of Shetty is completely different from that of
Joao, and re-argues the non-combinability of the references. Appellant does
not attempt an argument that Joao teaches away from combination with
Shetty. Appellant’s arguments against the physical incorporation of Joao
into the physical apparatus of Shetty are not persuasive of error, because the
standard for obviousness is not whether one reference may be bodily
incorporated into another, but whether the combined teachings of the
references would have suggested the modification proposed by the
Examiner. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the
Examiner concluded, and we agree, that it would have been obvious to
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combine Shetty and Joao, because of Joao’s suggestions of “sending a
command to control a vehicle equipment system, in response to a received
message indicating that the vehicle equipment system has failed or
malfunctioned” and of “sending a command to disable a vehicle ‘nightly’ or
as otherwise desired to protect it from theft.” Final Act. 9; Joao col.
24:40–52, col. 44:53–58, col. 42:25–35.
Appellant contends that the Examiner exercised impermissible
hindsight in combining Shetty and Joao. Appeal Br. 42. Appellant nakedly
asserts that Shetty and Joao are directed to different types of inventions —
“remotely monitoring construction vehicles” vs. “control apparatuses and
methods for vehicles” — such that a person of ordinary skill in the art
“would not have the hindsight [sic] to consider combining” them. Id.
Appellant further contends that the Examiner did not provide reasoning why
a skilled artisan would combine the references. Appeal Br. 43.
We do not consider Appellant’s argument to be persuasive. As
discussed supra, we agree with the Examiner that Joao teaches “various
reasons to remotely control equipment.” Ans. 51. As a consequence, we
determine that the Examiner did state a rationale to combine Shetty and Joao
having a rational underpinning to support a legal conclusion of obviousness,
and we determine that the Examiner did not employ impermissible hindsight
in proposing the combination of Shetty and Joao.
Because we are not persuaded that the Examiner erred, we sustain the
Examiner’s § 103 rejection of claims 1–7 over Shetty and Joao.

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Rejection of claims 8–13 and 15–21 over Shetty, Joao, and Garton
Independent claim 15 recites “an interface unit . . . having a message
generating means for generating an incoming message corresponding to a
state of the remote equipment.” Independent claim 8 contains an identical
limitation but refers to “the detected state” of the remote equipment.
Independent claims 19, 20, and 21 contain limitations identical to claim 8.
Supplemental to previous arguments against the combination of
Shetty and Joao, Appellant argues that the combination of Shetty and Joao
does not teach “an interface unit in bi-directional communication with a
piece of remote equipment . . . wherein a user may send a command message
to the remote piece of equipment via said communication link . . . to thereby
control the remote piece of equipment remotely.” Appeal Br. 43. Appellant
points out that the scope of claim 15 includes both “(i) the server in remote
bi-directional communication with the interface unit and (ii) a user capable
of sending a command message to the piece of equipment via the
communication link and the interface unit to control the piece of
equipment.” Appeal Br. 44–45. Appellant contends that information
manager 120 of Shetty is connected by one-way datalink to event database
108. Appeal Br. 45–46. Appellant argues that Shetty does not disclose or
suggest that warning manager 100’s user interface 110 is in communication
with, or being capable of communicating with, the mobile machines in order
to send command messages thereto. Appeal Br. 47.
Appellant’s arguments are not persuasive. We agree with the
Examiner’s finding that Joao, rather than Shetty, is relied upon to teach bi-
directional communication. Joao teaches a server in remote bi-directional
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communication with the interface unit, as well as an interface in bi-
directional communication with remote equipment, such that a user can send
a command message to the remote piece of equipment to thereby control
said equipment. Ans. 24–25, 52. “CPU 4 can be utilized in order to provide
control signals to activate and/or to de-activate any one or more of the
vehicle equipment systems.” Joao col. 35:44–46. We agree with the
Examiner that modifying Shetty to include such bi-directional
communication and remote equipment command would have been obvious
“to advantageously allow a user to remotely respond to the received
monitoring messages already disclosed by Shetty” or “to simply enable the
equipment owner to secure the remote equipment as desired.” Ans. 25. We
further agree with the Examiner that Appellant’s attack on Shetty
individually is ineffective to show the nonobviousness of the combination of
Shetty and Joao (and Garton). See Keller, 642 F.2d at 425.
Appellant argues that the proposed combination would change the
principle of operation of Shetty, in that warning manager 100’s user
interface would be modified “to also be in communication with the mobile
machines 118 through the notification means 112,” and such that notification
means 112 would be “in communication with the mobile machines 118
instead of, or in addition to, the batch processing means 112.” Appeal Br.
49. Appellant’s argument again fails because Joao, rather than Shetty, is
relied upon to teach a bi-directional communication and remote command of
equipment. Ans. 53.
Appellant’s argument against the combinability of Shetty and Joao, in
that “nothing in Shetty suggests sending . . . command messages to mobile
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machines 118,” and that the combination “would require incorporating an
additional component,” is not persuasive. Appeal Br. 50–51. We agree with
the Examiner that the rejections do not propose to merge the entirety of Joao
with the entirety of Shetty. Ans. 53. Appellant’s argument against the bodily
incorporation of features from Joao into Shetty is not persuasive to establish
that the Examiner erred. As discussed supra, we agree with the Examiner’s
reasoning that the proposed modification of Shetty in view of Joao would
allow a user to remotely respond to received monitoring messages, or to
simply enable the equipment owner to secure the remote equipment. Ans.
25.
Appellant argues that the Examiner did not correctly construe
“message generating means.” Appeal Br. 53. It is Appellant’s position that
the ’513 Patent discloses a three-step algorithm for message generation.
Appeal Br. 53.
Applying 35 U.S.C. § 112(f), we find that the Examiner correctly
construed “message generating means” as the corresponding structure
disclosed in the specification of the ’513 Patent: CPU 804, multiplexer 805,
and radio 801. Ans. 54; Williamson, 792 F.3d at 1347. The ’513 Patent
teaches that “[t]ogether, CPU 804, multiplexer 805, and radio 801 make up
the message generating mechanism of interface unit 10 discussed above.”
’513 Patent col. 15:57–59.
Once every 24 hours, the CPU assembles a packet
(heartbeat) of data which contains status and operational data of
connected monitored equipment and communicates this packet
of data to the transport radio module 801. The transport radio
module 801 then transmits the information to the remote server
as a normal status message as explained above. The CPU 804
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also monitors the status of the sensing devices 808. The state of
these inputs is feed [sic] into a virtual Programmable Logic
Controller (v-PLC) running within the CPU 804. The resultant
relay outputs of the v-PLC can cause the CPU 804 to assemble
an exception message packet and pass it on to the transport radio
801 for delivery to the remote server.
’513 Patent col. 15:60–16:5.
We agree with the Examiner’s finding concerning the three disclosed
structural elements (CPU 804, multiplexer 805, transport radio module 801)
disclosed in the ’513 Patent. Ans. 54. We further agree with the Examiner’s
determination that the message generating means is not a computer-
implemented means-plus-function limitation having a special purpose
computer programmed to perform a disclosed algorithm. Ans. 54.
Appellant further contends that Examiner failed to appreciate that the
patent’s message generating mechanism includes a two-way radio 801.
Appeal Br. 54. Appellant’s argument is not persuasive. The Examiner finds
that Garton teaches the claimed message generating means including a CPU
(control processor 30), a multiplexer (in the form of a relay that selects the
radio or the telephone communications link as desired), and a radio (two-
way radio transceiver 24). Final Act. 21; Ans. 55; Garton col. 2:40–48, col.
5:1–7, col. 5:23–39.
Appellant argues that the Examiner erred in finding that Garton
teaches a relay switch, rather than the multiplexer recited in claim 15.
Appeal Br. 56. We do not find Appellant’s argument persuasive. The
Examiner finds, and we agree, that the relay in control processor 30 of
Garton performs a function equivalent to a multiplexer because the relay
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selects either a radio or a telephone communications link. Ans. 26, 56;
Garton col. 5:23–39.
We are not persuaded by Appellant’s contention that the Examiner
failed to explain how and why the skilled artisan would combine Shetty and
Joao with Garton. Appeal Br. 57. The Examiner cites to relevant teachings
of Garton and gives reasons why the skilled artisan would have made the
combination (“to provide a structure that enables the advantageous selection
of a different communications link as desired or in the event of a
communications failure”). Final Act. 21; Ans. 56.
Appellant’s argument that the Examiner’s proposed combination of
Shetty with Joao and Garton would require change in principle of operation
is not persuasive. Appeal Br. 58. As discussed supra, contrary to Appellant’s
assertions, the Examiner does not propose to modify Shetty to operate in
real-time as Joao operates.
Appellant’s contention that the Examiner used impermissible
hindsight in combining Shetty with Joao and Garton is not persuasive. The
Examiner cited pertinent portions of the references, and provided a reason to
combine Shetty and Joao with Garton (“to provide a structure that enables
the advantageous selection of a different communications link as desired or
in the event of a communications failure”) having a rational underpinning.
Ans. 26.
We conclude that the Examiner did not err in rejecting claims 8–13
and 15–21, and we sustain the Examiner’s § 103 rejection over Shetty, Joao,
and Garton.

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Rejection of claim 14 over Shetty, Joao, Garton, and Cheng
Appellant argues that the combination of Shetty, Joao, Garton, and
Cheng does not disclose or suggest an interface unit periodically generating
a normal status message indicative of the proper operation of a piece of
equipment to which a sensor is connected. Appeal Br. 24, 59. Appellant
argues that Cheng provides the same teaching as Britton,4 which the Board
previously found did not provide a message “specifically indicative of [the]
proper operation of the piece of remote equipment.” Appeal Br. 60–61.
Appellant’s argument is not persuasive. We agree with the Examiner’s
finding that Cheng teaches an interface unit that periodically generates a
“normal status message if the sensor to which the interface unit is connected
detects a normal status condition indicative of proper operation.” Ans.
41–42. For example, Cheng explains that “each appliance 100 includes a
status reporter 120 that communicates messages regarding the status of the
appliance 100” and that
the communicated status 121 of the appliance 100 is used as a
direct or indirect indication of the security status of the appliance
100. For example . . . the status reporter 120a within the
computer 100a reports an ‘I’m OK’, or ‘I am appliance XYZ’,
message periodically. The absence of an expected ‘I’m OK’
message from the status reporter 120a could be cause for an
alarm.
Cheng col. 3:48–48, 3:55–63.
Further, we do not agree with Appellant that the teachings of Britton,
a reference not applied against the claim, are relevant to this ground of
rejection. Appeal Br. 60–62. The Board’s prior conclusions concerning a

4 U.S. Patent No. 6,040,770.
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combination of references including Britton, rather than Cheng, are not
binding upon this panel in this matter. See Ans. 40–41; Appeal Br. 27.
Appellant’s argument that Shetty, Joao, Garton, and Cheng are not
properly combinable is not persuasive. Appeal Br. 62. We do not agree with
Appellant that the Examiner failed to explain how the person having
ordinary skill in the art would combine the references. Id. The Examiner has
cited the pertinent teachings of each reference and given reasons why one of
ordinary skill would combine them. See Ans. 41–42.
Appellant’s argument that the proposed combination of Shetty, Joao,
Garton, and Cheng would require an improper change in the principle of
operation of (at least) Shetty is unpersuasive. Appeal Br. 63. Appellant
argues that the “distributed software controlled security system” of Cheng
could not be bodily incorporated into Shetty, Joao, and Garton. Id. However,
the Examiner does not propose “merging the entirety of Cheng’s system
with the entirety of Shetty’s system,” but merely proposes modifying Shetty
to include “Cheng’s normal status messages with identification.” Ans. 60.
We agree with the Examiner that Cheng’s status messages are not
incompatible with Shetty’s messages. Id.
Appellant’s argument that Shetty, Joao, Garton, and Cheng were
combined through impermissible hindsight is again unpersuasive. Appeal
Br. 64. Similar to the analysis supra with respect to Shetty and Joao, we
agree with the Examiner’s expressed rationale that it would have been
obvious to include the equipment identification codes taught by Cheng “in
order to advantageously recognize messages from multiple pieces of remote
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equipment.” Ans. 42. We conclude that the Examiner’s combination of
references does not rest upon impermissible hindsight.
The Examiner did not err in rejecting claim 14 over Shetty, Joao, and
Cheng. We sustain the Examiner’s § 103(a) rejection.

Substantial New Question of Patentability
Appellant argues in the Brief that no substantial new question of
patentability exists because the same question was previously presented to
the Board. Appeal Br. 65. Specifically, Appellant argues that because the
PTAB denied institution of IPR2016-01091, “based on the same two
primary references,” Shetty and Joao, the Examiner erred in finding such a
substantial new question of patentability.5 Appeal Br. 66.
Appellant must first request reconsideration of the SNQ before the
Examiner before we can review that issue. MPEP § 2274(VI). We observe
that Appellant did raise the issue before the Examiner at least in the
Response after Final Rejection filed January 30, 2019.
Patent Owner’s argument that a substantial new question of
patentability does not exist, however, is not persuasive. MPEP § 2242
specifies, in pertinent part, that a substantial new question of patentability
exists as to a claim “unless the same question of patentability has already
been . . . decided in a final holding of invalidity by a federal court in a

5 Appellant acknowledges that two other petitions for inter partes review
were filed against the ’513 patent, in IPR2015-01997 and IPR2016-00129.
These petitions asserted different prior art against the ’513 Patent. Both of
these petitions were denied. IPR2015-01197, Paper 14 at 9, 26–28 (PTAB
April 7, 2016); IPR2016-00129, Paper 13 at 16–17 (PTAB May 3, 2016).
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decision on the merits involving the claim, after all appeals . . . [or] decided
in an earlier concluded examination or review of the patent by the Office.”
MPEP § 2242(I). An “earlier concluded examination or review of the
patent” includes “the review of the patent in an earlier concluded trial by the
Patent Trial and Appeal Board, such as a post-grant review, inter partes
review, or covered business method review of the patent.” Id.
With regard to the patent under reexamination, while the petition for
inter partes review (IPR) of U.S. Patent No. 6,717,513 (IPR2016-01091)
asserted the same references (Shetty and Joao) against the patent as in this
reexamination, there was no “final holding of invalidity” based on these
references, and no decision in an earlier concluded examination or review of
the patent by the Board. Rather, the Board in the cited proceeding merely
weighed the discretionary factors governing whether to institute inter partes
review, and concluded that the factors weighed in favor of denying
institution of review of the ’513 Patent based on the petition. IPR2016-
01091, Paper 11 at 14 (PTAB Nov. 23, 2016). Because the Board denied
institution of inter partes review, there was no “review of the patent in an
earlier concluded trial by the [PTAB].”
The decision to deny inter partes review in IPR2016-01091 did not
constitute a final holding of invalidity or a decision in an earlier concluded
examination or review. As such, we conclude that the Examiner did not err,
and that a substantial new question of patentability exists. See MPEP § 2242.

CONCLUSIONS
1. The combination of Shetty and Joao discloses a radio transmitter.
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2. The combination of Shetty and Joao suggests configuring or
modifying a message profile.
3. The proposed combination of Shetty and Joao (with or without
Garton or Cheng) would not change the principle of operation of Shetty.
4. The combination of Shetty, Joao, and Garton teaches an interface
unit in bi-directional communication with a piece of remote equipment.
5. The Examiner did not err in construing “message generating
means.”
6. The combination of Shetty, Joao, Garton, and Cheng teaches an
interface unit periodically generating a normal status message indicative of
the proper operation of a piece of equipment to which a sensor is connected.
7. The Examiner did not err in finding that a substantial new question
of patentability exists.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–7 103 Shetty, Joao 1–7
8–13 and
15–21
103 Shetty, Joao, Garton 8–13 and
15–21

14 103 Shetty, Joao,
Garton, Cheng
14
Overall
Outcome

1–21

ORDER
The Examiner’s decision to reject claims 1–21 is affirmed.
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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED