Yehuda Binder et al.

Patent Trials and Appeals Board

May 18, 2020

2018007694 (P.T.A.B. May. 18, 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.
13/733,634 01/03/2013 Yehuda BINDER BINDER-014-US1 3976
131926 7590 05/18/2020
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
05/18/2020 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 YEHUDA BINDER and BENJAMIN MAYTAL
____________

Appeal 2018-007694
Application 13/733,634
Technology Center 2400
____________

Before JOHN A. JEFFERY, JUSTIN BUSCH, and LINZY T.
McCARTNEY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant requests rehearing of our decision dated March 2, 2020
(“Dec.”), where we affirmed the Examiner’s decision to reject claims 1–3,
13, 31, 33–35, 38, 39, 100–102, 104, 107, 108, 117, 118, 120, 140, 142, 159,
168, 193, 198, 201, and 223. Request for Rehearing filed Apr. 20, 2020
(“Req. Reh’g”). In the Request, Appellant contends that we misapprehended
or overlooked certain arguments raised in connection with the Examiner’s
ineligibility and obviousness rejections. For the reasons noted below, we
deny the request to modify our decision.

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THE INELIGIBILITY REJECTION
Appellant contends that, in affirming the Examiner’s ineligibility
rejection of claims 1–3, 13, 31, 33–35, 38, 39, 100–102, 104, 107, 108, 117,
118, 120, 140, 142, 159, 168, 193, 198, 201, and 223 under 35 U.S.C. § 101,
we misapprehended or overlooked various aspects of the claimed invention,
including the recited arrangement where (1) an actuator is in a different
device from a sensor device; and (2) two networks connect two networks,
where (a) the actuator and sensor communicate over an internal network in a
house or vehicle, and (b) a server communicates over an external network.
Req. Reh’g 2–3. Appellant emphasizes that our description of the abstract
idea is at too high a level of abstraction and does not consider the claims as a
whole. Req. Reh’g 3–7. According to Appellant, the claimed invention is
not a mental process and does not involve humans because, among other
things, the claimed invention recites an automatic system with particular
elements arranged in a particular way, where sensing and analyzing are done
at different locations. Req. Reh’g 9–11, 15–19. Appellant further contends
that not only does the claimed invention recite tangible machine elements
that “transform the claim to a particular machine” to satisfy the machine-or-
transformation test, the recited actuator functionality also satisfies the
transformation prong of that test as well. Req. Reh’g 11–14.
Appellant also argues that the recited non-generic arrangement, with
(1) a sensor and actuator in a building, and (2) a control server external to
the building, has not been shown to be well-understood, routine, and
conventional. Req. Reh’g 19–20. Appellant adds that each dependent claim
recites additional elements that provide an inventive concept to render the
claims eligible. Req. Reh’g 20–22.
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These arguments are unavailing. As we indicated on page 12 of our
earlier decision that is incorporated by reference here under 37 C.F.R.
§ 41.52(a)(1), we determined that apart from the recited “actuator,”
“sensor,” “network,” “router,” “first device,” “second device,” and “control
server,” all of claim 1’s recited limitations fit squarely within two categories
of the USPTO’s eligibility guidelines,1 namely (1) mental processes, and
(2) certain methods of organizing human activity. See Dec. 12–16. As we
indicated, when read as a whole, the recited limitations are directed to the
abstract idea of (1) obtaining information regarding a phenomenon;
(2) analyzing this information remotely; and (3) providing an associated
instruction to affect the phenomenon. Dec. 12.
In reaching this conclusion, we did not ignore the recited “actuator,”
“sensor,” “network,” “router,” “first device,” “second device,” and “control
server” or their arrangement as Appellant contends (Req. Reh’g 2). Rather,
we determined that these additional elements2 are beyond the identified
abstract idea that, when considered individually and collectively in
combination with the other recited limitations, do not (1) integrate the
abstract idea into a practical application, or (2) add significantly more to the

1 See 2019 Revised Patent Subject Matter Eligibility Guidance, U.S. Patent
& Trademark Office (USPTO), 84 Fed. Reg. 50 (Jan. 7, 2019); see also
October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
2 For brevity, we refer to recited “actuator,” “sensor,” “network,” “router,”
“first device,” “second device,” and “control server” collectively as
“additional elements” consistent with our earlier decision.
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abstract idea to render the claimed invention patent eligible when reading the
claim as a whole. Dec. 9–29.
As we explained, despite reciting a first device and associated sensor,
a human can nonetheless (1) respond to a phenomenon by sensing its
characteristics, such as by merely observing the phenomenon, and
(2) transmit corresponding data to a remote location by communicating that
observation to another person, such as a colleague. Dec. 12–13. Notably,
this observation could be communicated to the remote location either orally
or in writing. Although this process does not use the recited sensor, in-
building and external networks, and router to communicate the observation,
those electronic components are not part of the identified abstract idea that is
the “focus” of the claimed invention, but rather additional elements beyond
the abstract idea. As noted previously, and in our earlier decision, the
abstract idea is (1) obtaining information regarding a phenomenon;
(2) analyzing this information remotely; and (3) providing an associated
instruction to affect the phenomenon.
We also explained that, despite reciting a control server, a human,
such as a colleague, could otherwise (1) receive the data corresponding to
the phenomenon; (2) analyze that data entirely mentally or with pen and
paper; (3) based on this analysis, produce an associated instruction or
command; and (4) transmit the command to the observer either orally or in
writing to affect the phenomenon. Dec. 13–14. Although this process does
not use the recited control server to (1) receive and analyze the data, and
(2) produce an associated instruction or command, the recited control server
is not part of the identified abstract idea that is the “focus” of the claimed
invention, but rather an additional element beyond the abstract idea. And
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although this process does not use the recited external and in-building
networks, router, and second device to transmit the command to the observer
to affect the phenomenon, these electronic components are likewise not part
of the identified abstract idea that is the “focus” of the claimed invention,
but rather additional elements beyond the abstract idea, namely (1) obtaining
information regarding a phenomenon; (2) analyzing this information
remotely; and (3) providing an associated instruction to affect the
phenomenon.
To illustrate the abstract idea, we described a simple hypothetical
example in our earlier decision where an employee in an office building
observes that his or her computer monitor does not display anything, and
calls a help desk in another building informing an information technology
(IT) technician of this observed phenomenon. Dec. 14. Upon receiving and
analyzing this data based on the technician’s knowledge and experience, the
technician could determine that the problem may be due to the monitor not
receiving electrical power. Id. To remedy this problem, the technician
could then produce and transmit an instruction or command to the employee
by telling the employee to plug the monitor in a wall outlet to provide
electrical power to the monitor, thus affecting the phenomenon. Id.
Although this simple example uses a communication device, namely a
telephone, to communicate the observation to a technician outside the
building as Appellant indicates (Req. Reh’g 8), the observation could
nevertheless be communicated to the technician without a telephone (or any
communication device for that matter) by, among other things, merely
writing the observation down on a piece of paper and delivering it to the
technician by either the observer, a colleague, or a courier. Indeed, if the
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observer’s and technician’s buildings were closely adjacent each other, the
observation could conceivably be communicated to the technician by merely
telling the technician about the observation through open doors or windows.
In any event, the communication between the observer in the building and a
technician outside the building in this example need not involve any
communication device at all.
This example also demonstrates a simple “control loop,” at least to the
extent that (1) the observer senses the phenomenon by observing that the
monitor does not display anything; (2) the observer communicates that
observation to another person in another building, namely a technician;
(3) the technician then analyzes the received observation information either
entirely mentally or using pen and paper; and (4) the technician then
communicates an associated command or instruction back to the observer to
affect the phenomenon which, as noted above, merely commands or
instructs the observer to plug the monitor into an electrical wall outlet so that
the monitor will receive electrical power and display images. This simple
example is just one of numerous examples involving the abstract idea,
namely (1) obtaining information regarding a phenomenon; (2) analyzing
this information remotely; and (3) providing an associated instruction to
affect the phenomenon.
So, even if every step of this simple example could not be done
entirely mentally as Appellant contends (Req. Reh’g 8–9), the example
nevertheless also involves certain methods of organizing human activity, at
least with respect to communicating information between people, such as
phenomenon observations and associated commands to affect the
phenomenon as noted on pages 15 and 16 of our earlier decision. That is,
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the fact that the claimed invention recites both mental processes and certain
methods of organizing human activity under the USPTO’s Guidelines is not
dispositive, for it is well settled that merely combining abstract ideas does
not render the combination any less abstract. See RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Appellant’s contention that the claimed invention does not recite
human activity, but rather recites an automatic system without human
involvement (Req. Reh’g 10–11) is unavailing, for this argument ignores the
fact that the recited components, while providing automatic functionality,
are nonetheless additional elements beyond the abstract idea, namely
(1) obtaining information regarding a phenomenon; (2) analyzing this
information remotely; and (3) providing an associated instruction to affect
the phenomenon. As noted in our decision, these additional elements, when
considered individually and collectively in combination with the other
recited limitations, do not (1) integrate the abstract idea into a practical
application, or (2) add significantly more to the abstract idea to render the
claimed invention patent eligible when reading the claim as a whole.
Dec. 9–29.
As we explained on pages 16 to 25 of the decision, the recited
additional elements, namely the recited “actuator,” “sensor,” “network,”
“router,” “first device,” “second device,” and “control server,” do not
integrate the exception into a practical application when reading the claim as
a whole. Although we recognized that satisfying the machine-or-
transformation test can be a “useful clue” to eligibility and integrate the
exception into a practical application, we determined that the test was not
satisfied here. As we indicated, for a machine to impose a meaningful limit
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on the claimed invention, it must play a significant part in permitting a
claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly. Versata
Dev. Grp. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see
also MPEP § 2106.05(b)(II) (citing Versata). The latter role is the case here,
for the recited router, sensor, actuator, and devices are merely obvious
mechanisms that achieve the recited solution more quickly, namely
(1) obtaining information regarding a phenomenon; (2) analyzing this
information remotely; and (3) providing an associated instruction to affect
the phenomenon faster than by using manual methods.
Our emphasis underscores that using the recited computer- and
network-based components to implement the abstract idea would be faster
than doing so manually, at least with respect to implementing the recited
information gathering, analysis, and communication functions that constitute
the abstract idea. Appellant’s contention that communicating data over
internal and external networks is slower and not faster (Req. Reh’g 12–13) is
inapposite to our determination that the additional elements would achieve
the recited solution more quickly than with manual methods—not methods
using only local networks as Appellant seems to suggest. See Dec. 17
(citing Versata, 793 F.3d at 1335).
That is, despite the recited tangible components that are used to
achieve this end, as we noted in our decision, the claim’s focus is
nonetheless directed to (1) obtaining information regarding a phenomenon;
(2) analyzing this information remotely; and (3) providing an associated
instruction to affect the phenomenon, albeit using computer- and network-
based components to achieve that end. See Dec. 17–18 (citing ChargePoint,
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Inc. v. SemaConnect, Inc., 920 F.3d 759, 772–73 (Fed. Cir. 2019) (holding
ineligible claim reciting a network-controlled charge transfer system for
electric vehicles comprising, among other things, a communication device
configured to connect a controller to a mobile wireless communication
device for communication between the electric vehicle operator and the
controller); see also ChargePoint, 920 F.3d at 772 (noting the lack of an
indication that (1) the disclosed invention was intended to improve the
recited components, including the communications devices, or (2) that the
inventors viewed the combination of those components as their invention).
Our reliance on ChargePoint in our earlier decision is particularly
relevant—a highly analogous case that Appellant does not acknowledge, let
alone distinguish from the claimed invention. Claims 1 and 2 of U.S. Patent
8,138,715 (“the ’715 patent”) that were at issue in ChargePoint are
illustrative and reproduced below:

1. An apparatus, comprising:

a control device to turn electric supply on and off to enable and
disable charge transfer for electric vehicles;

a transceiver to communicate requests for charge transfer with a
remote server and receive communications from the remote server via a data
control unit that is connected to the remote server through a wide area
network; and

a controller, coupled with the control device and the transceiver, to
cause the control device to turn the electric supply on based on
communication from the remote server.

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2. The apparatus of claim 1, further comprising an electrical coupler
to make a connection with an electric vehicle, wherein the control device is
to turn electric supply on and off by switching the electric coupler on and
off.

ChargePoint, 920 F.3d at 766 (reproducing claims 1 and 2 of the ’715
patent) (emphasis added).
As noted above, the ’715 patent’s claim 1 recites tangible electronic
and network-based components, namely a (1) control device; (2) transceiver;
(3) controller; (4) wide area network; and (5) remote server, that are
arranged in a particular way to turn an electric power supply on based on
communication from the remote server. Dependent claim 2 adds an electric
coupler to make a connection with an electric vehicle.
Despite this recited arrangement of electronic and network-based
components to effect electronic control, the court nevertheless emphasized
that the claims were directed to the abstract idea of communication over a
network for interacting with a device, applied to the context of electric
vehicle charging stations. ChargePoint, 920 F.3d at 767–68. In reaching
this conclusion, the court acknowledged that the recited abstract idea was
associated with a tangible physical machine, namely an electric vehicle
charging station in claim 1, and an electrical coupler in claim 2. Id. at 770.
The court, however, emphasized that merely because a device is a tangible
system or, in § 101 terms, a “machine,” is not dispositive and, in the context
of claims 1 and 2 of the ’715 patent, did not preclude those claims from
being directed to the abstract idea of communication over a network to
interact with a device, applied in the context of charging stations. Id.
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The court in ChargePoint did not stop there. The court also held
claims 1 and 2 of U.S. Patent 8,450,967 (“the ’967 patent”) ineligible as
directed to the abstract idea of communicating over a network. See
ChargePoint, 920 F.3d at 771–72. Claim 1 is reproduced below:

1. A method in a server of a network-controlled charging system for
electric vehicles, the method comprising:

receiving a request for charge transfer for an electric vehicle at a
network-controlled charge transfer device;

determining whether to enable charge transfer;

responsive to determining to enable charge transfer, transmitting a
communication for the network-controlled charge transfer device that
indicates to the network-controlled charge transfer device to enable charge
transfer; and

transmitting a communication for the network-controlled charge
transfer device to modify application of charge transfer as part of a demand
response system.

ChargePoint, 920 F.3d at 771 (reproducing claim 1 of the ’967 patent)
(emphasis added).
As noted above, the ’967 patent’s claim 1 recites tangible electronic
and network-based components, including a (1) server; and (2) network-
controlled charge transfer device that are arranged in a particular way to
enable and modify charge transfer to electric vehicles.
Despite this recited arrangement of electronic and network-based
components to transfer charge to electric vehicles, the court nevertheless
emphasized that the claims were directed to the abstract idea of
communication over a network. ChargePoint, 920 F.3d at 771–72.
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The court reached a similar conclusion regarding claims 31 and 32 of
U.S. Patent 7,956,570 (“the ’570 patent”) reproduced below:

31. A network-controlled charge transfer system for electric vehicles
comprising:

a server;

a data control unit connected to a wide area network for access to said
server; and

a charge transfer device, remote from said server and said data
control unit, comprising:

an electrical receptacle configured to receive an electrical connector
for recharging an electric vehicle;

an electric power line connecting said receptacle to a local power
grid;

a control device on said electric power line, for switching said
receptacle on and off;

a current measuring device on said electric power line, for measuring
current flowing through said receptacle;

a controller configured to operate said control device and to monitor
the output from said current measuring device;

a local area network transceiver connected to said controller, said
local area network transceiver being configured to connect said controller to
said data control unit; and

a communication device connected to said controller, said
communication device being configured to connect said controller to a
mobile wireless communication device, for communication between the
operator of said electric vehicle and said controller.
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32. A system as in claim 31, wherein said wide area network is the
Internet.

ChargePoint, 920 F.3d at 772 (reproducing claims 1 and 2 of the ’570
patent) (emphasis added).
As noted above, the ’570 patent’s claim 1 recites tangible electronic
and network-based components, including a (1) server; (2) data control unit;
(3) wide area network; (4) charge transfer device; (5) electrical receptacle;
(6) electric power line; (7) control device; (8) current measuring device;
(9) controller; (9) local area network transceiver; (10) communication
device; and (11) mobile wireless communication device, that are arranged in
a particular way as part of a network-controlled charge transfer system.
Dependent claim 2 adds that the wide area network is the Internet.
Despite this recited arrangement of electronic and network-based
components in a network-controlled charge transfer system, the court
nevertheless emphasized that the claims were directed to the abstract idea of
communication over a network for device interaction. ChargePoint, 920
F.3d at 772–73. In reaching this conclusion, the court noted that the
inventors’ discovery was not the particular arrangement of the recited
components nor their improvement, but rather using a network
communication to interact with the particular devices. Id. at 773.
Similarly, we acknowledged on pages 16 to 18 of our earlier decision
that although claim 1 of the present invention recites tangible components,
namely an “actuator,” “sensor,” “network,” “router,” “first device,” “second
device,” and “control server,” that are arranged in a particular way, these
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components nevertheless did not preclude the claims from being directed to
an abstract idea, namely (1) obtaining information regarding a phenomenon;
(2) analyzing this information remotely; and (3) providing an associated
instruction to affect the phenomenon. In reaching this conclusion, we noted
on pages 16 to 18 of our earlier decision that the claimed invention not only
failed to satisfy the machine-or-transformation test (which is not dispositive
to patent eligibility in any event), but also did not improve the recited
components—a key factor in the court’s ineligibility analysis in
ChargePoint. See ChargePoint, 920 F.3d at 772 (noting the lack of an
indication that the ’570 patent’s invention was intended to improve certain
recited components, including the communication device). We also
determined that the particular arrangement of the recited components did not
render the claim patent-eligible for the reasons noted previously and in our
earlier decision. That the ineligible claimed invention in the ’570 patent in
ChargePoint involved two networks, namely a wide area network and a
local area network as noted above, only underscores the analogousness of
the facts in that case to the claimed invention here.
Nor are we persuaded of error in our holding in our earlier decision
that the claimed invention does not transform a particular article to a
different state or thing to satisfy the transformation prong of the machine-or-
transformation test (Dec. 24) despite Appellant’s arguments to the contrary
(Req. Reh’g 14). Not only is the machine-or-transformation test not
dispositive to eligibility, we nevertheless see no meaningful distinction
between the purported transformation achieved by the recited actuator in
Appellant’s invention and the transformation achieved by the claimed
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invention in ChargePoint that actuates electrical components to charge
electric vehicles as noted above.
Our ineligibility analysis is, therefore, consistent with applicable legal
precedent, including ChargePoint, and the USPTO’s Guidelines as indicated
above and in our earlier decision. That Appellant did not acknowledge—let
alone distinguish—ChargePoint despite our relying on this strikingly
analogous case in our earlier decision is telling in this regard.
Appellant’s reliance on Thales Visionix Inc. v. United States, 850 F.3d
1343 (Fed. Cir. 2017) (Req. Reh’g 4) is likewise unavailing. There, the
court held eligible claims reciting determining an orientation of an object
relative to a moving reference frame based on signals from two inertial
sensors mounted respectively on the object and on the moving reference
frame. Id. at 1345–49. In reaching its eligibility conclusion, the court noted
that the claimed invention used inertial sensors in an unconventional manner
to reduce errors in measuring a moving object’s relative position and
orientation on a moving reference frame. Id. at 1348–49.
That is not the case here. To the extent that Appellant contends that
the claimed invention here is directed to such technical improvements and
capabilities (see Req. Reh’g 4–7), we disagree, particularly given the
claimed invention’s high level of generality.
Nor are we persuaded of error in our determining that the recited
additional elements, namely the recited “actuator,” “sensor,” “network,”
“router,” “first device,” “second device,” and “control server,” do not add
significantly more to the abstract idea to render the claimed invention patent-
eligible under step two of the Alice/Mayo framework. Dec. 25–29.
Appellant’s contention that the recited arrangement, with (1) a sensor and
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actuator in a building, and (2) a control server external to the building, has
not been shown to be well-understood, routine, and conventional (Req.
Reh’g 19–20) is unavailing. As we indicated on pages 25 to 29 of our
earlier decision, we determined that the functionality of the additional
elements, namely the “actuator,” “sensor,” “network,” “router,” “first
device,” “second device,” and “control server,” when considered in the
context of the claim as a whole—including their arrangement—is well-
understood, routine, and conventional. We, therefore, did not misapprehend
or overlook these components’ arrangement as Appellant contends, but
rather considered this arrangement when considering these additional
elements in the context of the claimed invention.
Appellant’s contention that each dependent claim recites additional
elements that provide an inventive concept to render the claims eligible
(Req. Reh’g 20–22) is unavailing, for this particular argument, contesting
the eligibility of every dependent claim separately, was not made with
particularity in Appellant’s Appeal Brief, let alone the separate arguments
for claims 2, 3, 13, and 31–34 that are now made for the first time on page
22 of the rehearing request. Therefore, we could not have misapprehended
or overlooked these new arguments, nor will we consider them here in the
first instance on rehearing. See 37 C.F.R. §§ 41.52(a)(1), 41.79(b)(1)
(prohibiting new arguments in rehearing requests unless the new arguments
(1) are based on a recent relevant Board or Federal Court decision upon
showing good cause; (2) respond to a new ground of rejection; or
(3) contend that Board’s decision contains an undesignated new ground of
rejection). None of those exceptions apply here.
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Rather, Appellant argued only dependent claims 104, 107, and 108
with particularity in the Appeal Brief in connection with the ineligibility
rejection. See Appeal Br. 32 (“[T]he claims recite[] various features and
elements that are ‘significantly more’. Just as an example, carrying power
and data over the same cable (claims 104, 107–108) is clearly a non-abstract
significant feature.”) (emphasis added). We addressed this argument on
page 27 of our decision, and despite Appellant’s contentions (Req. Reh’g
20–22), we see no reason to disturb that determination.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s ineligibility rejection. Therefore, we deny
Appellant’s request to rehear our decision in that respect.

THE OBVIOUSNESS REJECTION
Claim 1
Regarding the obviousness rejection of claim 1, Appellant contends
that Abe and Beliles do not receive “commands from an external server to
[sic] the same building that includes the sensors.” Req. Reh’g 25–26.
Appellant further contends that the rationale for combining Abe with Beliles
noted on page 36 of our earlier decision, namely that the proposed
combination would enable analyzing and using multiple input values from
plural sensors along with threshold values before generating actuator control
commands, is “divorced from the suggested combination” because it is
ostensibly unclear that adding a control server external to the building
provides this functionality. Req. Reh’g 26. Appellant adds that Beliles
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nevertheless already provides this benefit, thus rendering the rationale moot.
Req. Reh’g 27.
These arguments are unavailing. First, as we noted on page 35 of our
earlier decision, we concluded that given Beliles’s Internet-based
functionality, we saw no error in the Examiner’s reliance on Abe merely to
show that providing an Internet-based control apparatus 101 that is external
to a building is known in the art as shown in Abe’s Figure 15, and that
providing such external control functionality in connection with Beliles’s
system would have been obvious. That Abe’s Figure 15 shows sensors and
actuators in different buildings as Appellant indicates (Req. Reh’g 25) is of
no consequence here, for Abe was cited for a limited purpose, namely
merely for teaching the recited external control server—not for teaching the
sensors disposed in the building. See Dec. 32 (summarizing the Examiner’s
findings that Beliles discloses every recited element except for an external
control server coupled to a router over the Internet via the recited external
network, and that Abe was cited to cure this deficiency).
As we explained in our earlier decision, Beliles discloses controlling
devices in a building responsive to certain conditions detected by sensors in
that building. See Dec. 34 (noting that “Beliles discloses a computer
network 100 in a building comprising, among other things, fire sensor 123
connected to sensor translator 132 that is, in turn, connected to router 152
that is connected to network cloud 110 to which fire suppression device 161
is connected”). In short, providing an external control server, such as that in
Abe, in connection with Beliles’s system would have been obvious as we
explained in our earlier decision. Appellant’s arguments regarding Abe’s
home network in Figure 6 (Req. Reh’g 26) are unavailing given the
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teachings in Abe’s Figure 15 noted above and in our earlier decision. In
short, Appellant’s arguments regarding Abe’s individual shortcomings do
not show nonobviousness where, as here, the rejection is based on the cited
references’ collective teachings. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
Nor are we persuaded of error regarding the rationale to combine the
references despite Appellant’s arguments to the contrary (Req. Reh’g 26–
27). In short, providing an external control server, such as that in Abe, in
connection with Beliles’s system merely uses prior art elements predictably
according to their established functions to yield a predictable result, namely
remote control capabilities. Dec. 37. As we noted on page 37 of our earlier
decision, this use of prior art elements according to their established
functions to yield a predictable result is an obvious improvement. See KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
We also noted that because Beliles and Abe both involve commanding
an actuator responsive to a sensor response as the Examiner indicates (Ans.
16), the references are not only in the same field of endeavor as Appellant’s
invention, but they are also reasonably pertinent to Appellant’s problem in
that regard. Dec. 37. Although Appellant contends that it is unclear how the
same definition can define both a field of endeavor and a problem (Req.
Reh’g 23), Appellant cites no authority to show that the two cannot
nevertheless be closely related to each other as is the case here. To the
extent that Appellant contends that our earlier opinion was somehow
premised on the notion that the field of endeavor and the inventor’s problem
are identical, we disagree. Rather, we indicated that (1) we saw no error in
the Examiner’s finding that the cited references were in the field of endeavor
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involving technology that commands actuators responsive to sensor
responses, and (2) that the cited references were also reasonably pertinent to
Appellant’s problem in that regard. Dec. 37. That is, the problem
addressed by the inventor pertains to commanding an actuator responsive to
a sensor response, namely doing so remotely.
To be sure, prior art is analogous if it is (1) from the same field of
endeavor regardless of the problem addressed, or (2) if the reference is not
within the field of the inventor’s endeavor, the reference is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Although these two prongs are
distinct from each other, they can nevertheless be closely related to each
other.
A simple example illustrates this point. If the field of endeavor is
baking, and the problem to be solved by an invention is how to bake bread,
then a prior art reference disclosing a bread baking oven would not only be
in the same field of endeavor, namely baking, the reference would also be
reasonably pertinent to the problem, namely how to bake bread.
Although a prior art reference can be analogous if it is in the same
field of endeavor regardless of the problem addressed, Bigio, 381 F.3d at
1325, that does not mean that the field of endeavor and the inventor’s
problem cannot be closely related as is the case here. Similarly, while a
reference can be reasonably pertinent to the inventor’s problem even if the
reference is not within the field of the inventor’s endeavor, that does mean
that the field of endeavor and the inventor’s problem cannot nevertheless be
closely related as is the case here.
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In addition, an inventor’s problem with respect to claimed invention
may not be limited to just one aspect, for example how to bake bread, as in
the above example. If, for example, there were other claims reciting aspects
of baking using convection heating, the inventor’s problem would also
include aspects that pertain to that specific technology, namely convection
heating. And if there were claims reciting baking bread using radiant heat,
then the inventor’s problem would also include aspects pertaining to that
particular technology, specifically radiant heating. Moreover, if there were
claims reciting that the bread was baked in an oven that was controlled
remotely, then the inventor’s problem would also include aspects pertaining
to that particular technology, specifically remote control systems.
That is, depending on the scope of the claimed invention, there may
be more than one problem addressed by the inventor, or possibly sub-
problems of a larger problem. Therefore, prior art references that may not
be in same field of endeavor (baking in the above example), or even
reasonably pertinent to one or more of the inventor’s problems, nonetheless
may be reasonably pertinent to a different problem or sub-problem addressed
by the inventor. For example, a prior art reference describing a convection-
based drying system is not in the same field of endeavor as baking in the
above example, but nevertheless could be reasonably pertinent to the
inventor’s problem with respect to baking bread using convection.
Similarly, a prior art reference describing a system for radiantly heating a
workpiece may not be in the baking field of endeavor, but nevertheless could
be reasonably pertinent to the inventor’s problem with respect to baking
bread using radiant heat. Moreover, a prior art reference describing a
remotely-controlled heating chamber for workpieces may not be in the
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baking field of endeavor, but nevertheless could be reasonably pertinent to
the inventor’s problem with respect to baking bread using remote control.
As with these simple examples, the scope of Appellant’s claimed
invention likewise raises different problems for which the cited references
are reasonably pertinent. Appellant’s contention, then, that certain cited
references are non-analogous because they do not pertain to the same
problem (Req. Reh’g 23–24) is unavailing, for this argument ignores the fact
that the cited references are reasonably pertinent to the particular problems
or sub-problems associated with the particular claimed invention for which
those references were cited.
On this record, then, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 1. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

Claim 3
Regarding the obviousness rejection of claim 3, Appellant contends
that we misinterpreted the claim by focusing only on the added sensor, but
not that (1) the sensor is external to the building (or vehicle); (2) the sensor
senses a different phenomenon; and (3) the additional sensor data is sent
over a distinct network. Req. Reh’g 27–28.
Appellant’s arguments are unavailing. First, to the extent that
Appellant contends that claim 3 requires sending the additional sensor data
over a network distinct from the external network, such an argument is not
commensurate with the scope of the claim that recites sending that data
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alternatively over the external network or a network distinct from the
external network.
Nevertheless, to the extent that Appellant contends that the cited prior
art does not collectively teach or suggest the limitations recited in claim 3,
such arguments were not raised in the Appeal Brief, where the arguments for
claim 3 were limited solely to the alleged lack of a rationale to combine the
references. See Appeal Br. 39–40. Because Appellant’s new limitation-
based arguments raised in the rehearing request were not previously raised
on appeal, we decline to consider these untimely arguments here in the first
instance on rehearing. See 37 C.F.R. §§ 41.52(a)(1), 41.79(b)(1).
Accordingly, we are not persuaded that we misapprehended or overlooked
those points in rendering our decision.
Not only did we conclude in our earlier decision that providing the
recited additional sensor in connection with the Beliles/Abe system merely
uses prior art elements predictably according to their established functions
consistent with the KSR decision, but we also found no persuasive evidence
on this record that providing the recited additional sensor in the Beliles/Abe
system as the Examiner proposes would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans. See Dec. 39 (citing
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007)).
We also noted that both Abe and Beliles use multiple sensors to
produce actuator commands. Dec. 39. Notably, one of those sensors,
namely Beliles’s sensor 124 in Figure 1, is labeled “ETC.,” an open-ended
and non-limiting designation that at least reasonably includes an external
sensor sensing a different phenomenon, or that such a feature would have
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been at least an obvious variation, particularly given the variety of
conditions sensed including, among other things, smoke, fire, etc., that could
be detected outside a building.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 3. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

Claim 13
We are also unpersuaded that we misapprehended or overlooked the
points raised in the rehearing request regarding our affirming the
obviousness rejection of claim 13. Despite Appellant’s arguments to the
contrary (Req. Reh’g 28–29), we simply held that it would have been
obvious to ordinarily skilled artisans to use piezoelectric materials in either
Abe’s or Beliles’s motion sensors given the known use of such materials for
that purpose. Dec. 40. That is, we did not ignore the recited structure as
Appellant seems to suggest, but rather concluded that because it was known
at the time of the invention to use piezoelectric materials in motion
sensors—a finding that is undisputed—using those materials in Beliles’s or
Abe’s motion sensors would have used prior art elements predictably
according to their established functions consistent with the KSR decision
and, therefore, would have been obvious. See id.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 13. Therefore, we
deny Appellant’s request to rehear our decision in that respect.
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Claim 31
We are also unpersuaded that we misapprehended or overlooked the
points raised on pages 29 and 30 of the rehearing request regarding our
affirming the obviousness rejection of claim 31.
First, Appellant’s contention that the analogous art argument raised
for the first time in the Reply Brief is not waived because “the field /
problem definitions” were raised for the first time in the Examiner’s Answer
(Req. Reh’g 29) is unavailing. On page 43 of our earlier decision, we cited
page 19 of the Examiner’s Answer that states, in pertinent part, “[c]laim 31
is about identifying the devices with a distinct address within the digital data
network[], and Ansari (¶0116) teaches that DHCP server dynamically
allocates unique network IP addresses to client endpoints.” These findings,
which were responsive to Appellant’s arguments in the Appeal Brief
regarding claim 31. Appellant’s arguments in the Appeal Brief did not argue
Ansari was non-analogous art, and the Examiner’s findings in the Answer do
not somehow raise an analogous art issue with respect to Ansari that would
justify Appellant’s new non-analogous art argument on page 23 of the Reply
Brief.
We, therefore, see no reason to disturb our holding that Appellant
waived the new analogous art argument on page 44 of our earlier decision.
Moreover, Appellant’s contention that “[i]n any case, new arguments may
be raised in a re-hearing” (Req. Reh’g 29; emphasis added) is not only
unsubstantiated, it runs counter to the rules governing rehearing requests to
the Board that prohibit new arguments in those requests unless the new
arguments (1) are based on a recent relevant Board or Federal Court decision
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upon showing good cause; (2) respond to a new ground of rejection; or
(3) contend that the Board’s decision contains an undesignated new ground
of rejection. See 37 C.F.R. §§ 41.52(a)(1), 41.79(b)(1). None of those
exceptions apply here.
We reach the same conclusion regarding Appellant’s additional new
contention on page 30 of the request that Ansari does not teach or suggest
storing the address in a volatile or non-volatile memory. Here again, this
argument was not raised in the Appeal Brief, where the arguments for claim
31 were limited solely to the alleged improper rationale to combine the
references that included an alleged inconsistency with the Examiner’s earlier
restriction requirement (see Appeal Br. 43–44), which was not before us.
See Dec. 37–38. Because Appellant’s new arguments raised in the rehearing
request were not previously raised on appeal, we decline to consider these
untimely arguments here in the first instance on rehearing. See 37 C.F.R. §§
41.52(a)(1), 41.79(b)(1).
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 31. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

Claim 35
We are also unpersuaded that we misapprehended or overlooked the
points raised on page 30 of the rehearing request regarding our affirming the
obviousness rejection of claim 35. As noted on page 44 of our earlier
decision, Appellant did not argue the Examiner’s rejection of claim 35 with
particularity. See Appeal Br. 43–44 (grouping claims 31 and 33–35
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together). Because Appellant’s new argument raised in the rehearing request
was not raised previously on appeal, we decline to consider this untimely
argument here in the first instance on rehearing. See 37 C.F.R.
§§ 41.52(a)(1), 41.79(b)(1).
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 35. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

Claim 38
We are also unpersuaded that we misapprehended or overlooked the
points raised on page 30 of the rehearing request regarding our affirming the
obviousness rejection of claim 38. Appellant’s contention that we did not
explain how Noonan is pertinent to Appellant’s full problem (Req. Reh’g
30) is unavailing. As we explained in our earlier decision, “[b]ecause
Noonan’s system processes data acquired from multiple networked devices
as the Examiner indicates (Ans. 16), the references are at least reasonably
pertinent to Appellant’s problem in that regard.” Dec. 45 (emphasis added).
Our emphasis underscores that we found Noonan was analogous art because
it was reasonably pertinent to Appellant’s problem with respect to
processing data acquired from networked devices. We see no reason to
disturb that finding.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 38. Therefore, we
deny Appellant’s request to rehear our decision in that respect.
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Claims 117, 118, and 120
We are also unpersuaded that we misapprehended or overlooked the
points raised on pages 30 and 31 of the rehearing request regarding our
affirming the obviousness rejections of claim 117, 118, and 120. Claim 117
recites a device out of a group consisting of the router, first device, second
device, and control server is operative for communicating with another
device from the group over multiple data paths.
Our emphasis underscores that the claim recites, quite broadly, that
two devices communicate over multiple data paths—not redundant data
paths such that one data path functions as a backup data path as Appellant
seems to suggest. See Req. Reh’g 31.
As we explained in our earlier decision, we found no error in the
Examiner’s reliance on the bus-connected network interfaces 210 with their
respective data paths in Beliles’s Figure 2 for at least suggesting the recited
limitations. Dec. 41 (citing Non-Final Act. 17–18; Ans. 17–18 (citing
Beliles ¶ 31; Fig. 2)).
Our emphasis underscores that not only does the bus itself use a
common data path in Beliles’s Figure 2, but the devices connected to the bus
also have their own respective data paths that ensure data are transferred to
and from the bus. Therefore, two devices use multiple data paths to
communicate via the bus. Appellant’s arguments (Req. Reh’g 31) are,
therefore, unavailing and not commensurate with the scope of the claim.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejections of claims 117, 118, and
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120. Therefore, we deny Appellant’s request to rehear our decision in that
respect.

Claim 140
We are also unpersuaded that we misapprehended or overlooked the
points raised on pages 32 and 33 of the rehearing request regarding our
affirming the obviousness rejection of claim 140. Claim 140 recites that the
control server is operative to analyze the sensor data versus the transmitted
actuator commands.
As we explained on pages 41 and 42 of our earlier decision, we found
no error in the Examiner’s reliance on Abe’s paragraph 51 and Figures 2 and
13 for at least suggesting the recited control server analysis functionality.
Notably, on pages 41 and 42 of the Appeal Brief, Appellant’s arguments
were directed solely to Abe’s paragraph 51 and the alleged inconsistencies
with the Examiner’s restriction requirement which, as noted previously and
in our earlier decision, was not before us. In short, Appellant did not
acknowledge—let alone persuasively rebut—the Examiner’s additional
reliance on Abe’s Figures 2 and 13 for at least suggesting the recited
limitations. See Appeal Br. 41–42.
Appellant’s arguments on page 23 of the Reply Brief regarding claim
140 are even further remote from the Examiner’s findings in this regard, for
as we noted on page 42 of our earlier decision, these arguments focused
solely on Beliles’s alleged failure to disclose multiple data paths connecting
the same two devices—an inconsistency that Appellant acknowledges. See
Req. Reh’g 32 (conceding that the Reply Brief mistakenly identified the
response to claim 120 as claim 140).
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Therefore, to the extent that Appellant contends that the Examiner’s
additional reliance on Abe’s Figures 2 and 13 is erroneous because these
figures’ disclosed functionality does not teach or suggest the recited control
server analysis limitation (see Req. Reh’g 32–33), such an argument was not
raised previously on appeal, and we decline to consider this untimely
argument here in the first instance on rehearing. See 37 C.F.R.
§§ 41.52(a)(1), 41.79(b)(1).
Nor will we consider in the first instance on rehearing Appellant’s
argument regarding the alleged lack of a rationale to modify Beliles to
include the limitations of claim 140, and the alleged inapplicable rationale in
this regard articulated with respect to claim 1 (Req. Reh’g 33)—arguments
that were not raised previously on appeal. See 37 C.F.R. §§ 41.52(a)(1),
41.79(b)(1).
Appellant’s arguments regarding the alleged shortcomings of Abe’s
paragraph 51 in connection with the recited control server analysis limitation
(see Req. Reh’g 32–33) are, therefore, unavailing, for they do not address—
let alone persuasively rebut—the Examiner’s findings that are not based
solely on the teachings and suggestions from Abe’s paragraph 51, but also
on the teachings and suggestions from the functionality disclosed in Abe’s
Figures 2 and 13 as we noted on pages 41 and 42 of our earlier decision.
Nevertheless, Appellant’s arguments regarding Abe’s alleged failure
to teach or suggest analyzing former actuator commands (see Appeal Br. 32)
is unavailing and not commensurate with the scope of the claim. Claim 140
recites, quite broadly, that the control server is operative to analyze the
sensor data versus the transmitted actuator commands. Our emphasis
underscores that although the term “transmitted” is in the past tense, nothing
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in the claim precludes the control server from transmitting actuator
commands based on analyzing sensor data (e.g., determining whether the
sensor data exceeds a predetermined threshold) as is the case in the cited
prior art. In this case, the control server analyzes the sensor data
independently from the commands that are transmitted.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 140. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

Claim 101
We are also unpersuaded that we misapprehended or overlooked the
points raised on pages 33 and 34 of the rehearing request regarding our
affirming the obviousness rejection of claim 101. Claim 101 depends from
independent claim 100 and recites, in pertinent part, that the actuator is an
electric light source that emits visible or non-visible light.
As we explained on pages 41 and 42 of our earlier decision, we found
no error in the Examiner’s reliance on Wechs for at least suggesting the
recited light source actuator, particularly when Wechs’s teachings are
considered in light of Beliles and Abe that were relied upon in rejecting
independent claim 100 from which claim 101 depends. See Non-Final Act.
17 (rejecting claim 100 on the same basis as claim 1).
To the extent that Appellant contends that the cited prior art does not
collectively teach or suggest the limitations recited in claim 101, including
the recited sensor that responds to a phenomenon that is said to be lacking in
Wechs (see Req. Reh’g 33–34), such arguments were not raised in the
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Appeal Brief, where the arguments for claim 101 were limited solely to
(1) the rationale to combine the cited references being irrelevant to the
claimed invention; (2) the Examiner not explaining why Beliles and Wechs
can and should be combined; (3) Beliles and Wechs are non-analogous art
involving different fields; and (4) alleged inconsistencies with the
Examiner’s restriction requirement which, as noted previously and in our
earlier decision, was not before us. See Appeal Br. 45–47. In short,
Appellant’s arguments in the Appeal Brief regarding claim 101 were based
principally on the cited references’ combinability—not whether the proposed
combination would have taught or suggested the recited limitations.
Because Appellant’s new limitation-based arguments raised in the rehearing
request were not previously raised on appeal, we decline to consider these
untimely arguments here in the first instance on rehearing. See 37 C.F.R.
§§ 41.52(a)(1), 41.79(b)(1). Accordingly, we are not persuaded that we
misapprehended or overlooked those points in rendering our decision.
Nevertheless, Appellant’s contention that we did not provide any
rationale for modifying Beliles to arrive at the invention of claim 101 (Req.
Reh’g 34) is incorrect. As we noted on page 46 of our earlier decision, we
reasoned that “[b]ecause Wechs’s system controls an actuator-based light
source, namely infrared light emitting diode (LED) 12 as noted in
paragraphs 6, 7, and 18, Wechs is at least reasonably pertinent to Appellant’s
problem, at least with respect to commanding an actuator and, therefore, is
analogous art.” Notably, we added that the Examiner’s proposed
enhancement to the Beliles/Abe system, namely to provide an electric light
source actuator, was an obvious improvement to the Beliles/Abe system
because it uses prior art elements predictably according to their established
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functions. Dec. 46 (citing KSR, 550 U.S. at 417). Appellant fails to
acknowledge, let alone persuasively rebut, this emphasized combinability
rationale that is based on fundamental obviousness principles articulated by
the U.S. Supreme Court in KSR. That is, this use of prior art elements,
namely the recited electric light source actuator, yields a predictable result,
namely illumination when actuated.
We, therefore, see no reason to disturb our conclusion in this regard,
particularly since Wechs’s light-emitting actuator is triggered by a
controller as noted in paragraph 7 and shown in the associated figure where
an arrow is directed from controller 6 to LED 20. Providing such a
controlled light source actuator in connection with the Beliles/Abe system as
proposed would have been at least an obvious variation. We reach this
conclusion noting Beliles’s open-ended and non-limiting designations
“ETC.” for both sensor 124 and physical control device 164 that at least
suggest that a wide variety of unspecified sensors and associated devices can
be controlled in that system, including electric light sources. That one of
those devices, namely physical control device 163, is a video surveillance
system that could conceivably be used with an electric light source, only
bolsters this conclusion, as does Abe’s controlling an image display device
51 in Figure 1.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 101. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

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Claim 104
We are also unpersuaded that we misapprehended or overlooked the
points raised on pages 34 to 36 of the rehearing request regarding our
affirming the obviousness rejection of claim 104 reciting, in pertinent part, a
wired network using a cable connectable to carry (1) a DC or AC power
signal, and (2) a communication signal simultaneously.
As we explained on pages 47 and 48 of our earlier decision, we found
no error in the Examiner’s reliance on Gelvin for at least suggesting the
recited cable with its power and communication signal carrying
capabilities—a finding that is undisputed. We also noted that the
Examiner’s proposed enhancement to the Beliles/Abe system, namely
providing a power/communications signal cable such as that in Gelvin,
would have been obvious because the proposed combination uses prior art
elements predictably according to their established functions—an obvious
improvement. Dec. 47 (citing KSR, 550 U.S. at 417). Appellant not only
fails to acknowledge, let alone persuasively rebut, this emphasized
combinability rationale thatis based on fundamental obviousness principles
articulated by the U.S. Supreme Court in KSR. That is, this use of prior art
elements, namely the recited cable with its electric power and
communication signal carrying capabilities, yields a predictable result,
namely the ability to carry electric power and communications signals
simultaneously over the same cable, thus precluding the need for separate
cables.
Appellant’s contention that Gelvin is non-analogous art because it is
silent regarding actuators and actuators that respond to sensors (Req. Reh’g
35) is unavailing. As we noted on pages 47 and 48 of our earlier decision,
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Gelvin is analogous art because it provides network-based access to, among
other things, sensors and controls in paragraph 4, and, therefore, is at least
reasonably pertinent to Appellant’s problem, at least with respect to
accessing network-based sensing and control components.
We also find unpersuasive Appellant’s contention that the Examiner’s
combining Beliles, Abe, and Gelvin is improper because both systems are
ostensibly self-contained and independently operate effectively. See Req.
Reh’g 36. To be sure, the court in Kinetic Concepts noted that because two
cited prior art references independently accomplished similar functions,
namely draining fluids, each device independently operated effectively such
that ordinarily skilled artisans seeking to create a better device to drain fluids
from a wound would have no reason to combine the features of both devices
into a single device. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
F.3d 1342, 1369 (Fed. Cir. 2012).
Not only are the facts in Kinetic Concepts regarding draining fluids
from a wound entirely different from those at issue here, we add that
familiar items may have obvious uses beyond their primary purposes, and
often ordinarily skilled artisans can fit multiple references’ teachings
together like puzzle pieces, as is the case here. See KSR, 550 U.S. at 420.
Therefore, as we indicated in our earlier decision, the Examiner’s proposed
enhancement to the Beliles/Abe system, namely providing a
power/communications signal cable such as that in Gelvin, would have been
obvious because the proposed combination uses prior art elements
predictably according to their established functions—an obvious
improvement. Dec. 47 (citing KSR, 550 U.S. at 417).
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On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 104. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

Claim 108
We are also unpersuaded that we misapprehended or overlooked the
points raised on pages 34 to 36 of the rehearing request regarding our
affirming the obviousness rejection of claim 108 reciting, in pertinent part,
that the power and communication signals are carried using Frequency
Division Multiplexing (FDM).
As we explained on pages 49 to 51 of our earlier decision, we found
no error in the Examiner’s reliance on Rofougaran for at least suggesting the
recited FDM-based capability—a finding that is undisputed. We also noted
that the Examiner’s proposed enhancement to the Beliles/Abe/Gelvin
system, namely to carry the power and communication signals using FDM,
would have been obvious because the proposed combination uses prior art
elements predictably according to their established functions—an obvious
improvement. Dec. 49–50 (citing KSR, 550 U.S. at 417). Appellant not
only fails to acknowledge, let alone persuasively rebut, this emphasized
combinability rationale thatis based on fundamental obviousness principles
articulated by the U.S. Supreme Court in KSR. That is, this use of prior art
elements, namely FDM, yields a predictable result, namely the ability to
carry electric power and communications signals simultaneously over the
same cable using known frequency-division protocols, thus precluding the
need for separate cables.
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To be sure, we acknowledged on page 50 of our earlier decision that
the Examiner’s articulated basis for combining the references pertains to
wireless communication between devices—not using FDM to carry power
and communication signals concurrently over wired connections as claimed.
Nevertheless, we concluded that there was at least some rational basis for the
Examiner’s rationale to combine the references, at least to the extent that it
is premised on using a known technique, namely FDM, to enhance
communicating distinct power and communication signals over wired
connections to yield a predictable result and, therefore, is reasonably
consistent with the fundamental obviousness principles articulated by the
U.S. Supreme Court in KSR.
Notably, we cited KSR for the notion that where, as here, a technique
(FDM) has been used to improve one device (wireless connections), and an
ordinarily skilled artisan would recognize that it would improve similar
devices (wired connections) in the same way, using the technique is obvious
unless its actual application is beyond his or her skill. Dec. 50 (citing KSR,
550 U.S. at 417). Appellant did not acknowledge this finding, let alone
show that using FDM as claimed would have been beyond the skill level of
ordinarily skilled artisans. See Req. Reh’g 36–39.
Furthermore, as we indicated on pages 50 and 51 of our earlier
decision, to the extent that Appellant contends that using a known FDM
technique, such as that in Rofougaran, to carry power and communication
signals over the same wires as the Examiner proposes, would have been
uniquely challenging or otherwise beyond the level of ordinarily skilled
artisans, there is no persuasive evidence on this record to substantiate such a
contention. Appellant likewise did not acknowledge this finding, let alone
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show that using FDM as claimed would have been beyond the skill level of
ordinarily skilled artisans. See Req. Reh’g 36–39.
Appellant’s contention that Rofougaran is non-analogous art because
it is silent regarding actuators and actuators that respond to sensors (Req.
Reh’g 37) is unavailing. As we noted on page 50 of our earlier decision,
Rofougaran is analogous art because it is at least reasonably pertinent to
Appellant’s problem of communicating signals concurrently over the same
communications medium, such as wires.
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s obviousness rejection of claim 108. Therefore, we
deny Appellant’s request to rehear our decision in that respect.

CONCLUSION

Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Denied Granted
2, 13, 31,
38, 39,
101, 102,
104, 107,
108, 117,
118, 120,
112,
second
paragraph
Indefiniteness3

3 Because Appellant did not request rehearing of our decision reversing the
Examiner’s indefiniteness rejection (Dec. 29–31), we leave the associated
denial and grant columns blank.
Appeal 2018-007694
Application 13/733,634

39

140, 142,
159, 168,
193, 198,
201
1–3, 13,
31, 33–
35, 38,
39, 100–
102, 104,
107, 108,
117, 118,
120, 140,
142, 159,
168, 193,
198, 201,
223
101 Eligibility 1–3, 13, 31,
33–35, 38, 39,
100–102, 104,
107, 108, 117,
118, 120, 140,
142, 159, 168,
193, 198, 201,
223

1–3, 13,
100, 117,
118, 140,
142, 159,
168, 193,
201, 223
103 Beliles, Abe 1–3, 13, 100,
117, 118, 140,
142, 159, 168,
193, 201, 223

31, 33–35 103 Beliles, Abe,
Ansari
31, 33–35
38, 39 103 Beliles, Abe,
Noonan
38, 39
101, 102 103 Beliles, Abe,
Wechs
101, 102
104, 107 103 Beliles, Abe,
Gelvin
104, 107
108 103 Beliles, Abe,
Rofougaran
108
120 103 Beliles, Abe,
Noonan,
Ansari
120
Appeal 2018-007694
Application 13/733,634

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198 103 Beliles, Abe,
Ansari,
Balgard
198
Overall
Outcome
1–3, 13,
31, 33–
35, 38,
39, 100–
102, 104,
107, 108,
117, 118,
120, 140,
142, 159,
168, 193,
198, 201,
223
1–3, 13, 31,
33–35, 38, 39,
100–102, 104,
107, 108, 117,
118, 120, 140,
142, 159, 168,
193, 198, 201,
223

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
2, 13, 31,
38, 39,
101, 102,
104, 107,
108, 117,
118, 120,
140, 142,
159, 168,
193, 198,
201
112,
second
paragraph
Indefiniteness

2, 13, 31, 38, 39,
101, 102, 104,
107, 108, 117,
118, 120, 140,
142, 159, 168,
193, 198, 201
1–3, 13,
31, 33–
35, 38,
39, 100–
102, 104,
107, 108,
101 Eligibility 1–3, 13, 31, 33–
35, 38, 39, 100–
102, 104, 107,
108, 117, 118,
120, 140, 142,

Appeal 2018-007694
Application 13/733,634

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117, 118,
120, 140,
142, 159,
168, 193,
198, 201,
223
159, 168, 193,
198, 201, 223
1–3, 13,
100, 117,
118, 140,
142, 159,
168, 193,
201, 223
103 Beliles, Abe
31, 33–35 103 Beliles, Abe,
Ansari
31, 33–35
38, 39 103 Beliles, Abe,
Noonan
38, 39
101, 102 103 Beliles, Abe,
Wechs
101, 102
104, 107 103 Beliles, Abe,
Gelvin
104, 107
108 103 Beliles, Abe,
Rofougaran
108
120 103 Beliles, Abe,
Noonan,
Ansari
120
198 103 Beliles, Abe,
Ansari,
Balgard
198
Overall
Outcome
1–3, 13,
31, 33–
35, 38,
39, 100–
102, 104,
107, 108,
117, 118,
120, 140,
142, 159,
1–3, 13, 31, 33–
35, 38, 39, 100–
102, 104, 107,
108, 117, 118,
120, 140, 142,
159, 168, 193,
198, 201, 223

Appeal 2018-007694
Application 13/733,634

42

168, 193,
198, 201,
223

DENIED