ABB AG

Patent Trials and Appeals Board

Mar 30, 2022

2021001433 (P.T.A.B. Mar. 30, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/983,144 05/18/2018 Gargi Bag 816400 1157 95683 7590 03/30/2022 Leydig, Voit & Mayer, Ltd. (Frankfurt office) Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, IL 60601-6731 EXAMINER CHOUDHURY, RAQIUL A ART UNIT PAPER NUMBER 2444 NOTIFICATION DATE DELIVERY MODE 03/30/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARGI BAG, ZHIBO PANG, and MORGAN JOHANSSON Appeal 2021-001433 Application 15/983,144 Technology Center 2400 Before JAMES R. HUGHES, JOYCE CRAIG, and MATTHEW J. McNEILL, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-3, 5-8, 10-13, 15, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies ABB Schweiz AG as the real party in interest. Appeal Br. 2. Appeal 2021-001433 Application 15/983,144 2 CLAIMED SUBJECT MATTER According to Appellant, the claims relate to “managing communication between a building automation device and a gateway.” Spec., 1:5-6. Claim 1 is reproduced below and illustrates the claimed subject matter: 1. A method for managing communication with a building automation device, the method being performed in a gateway and comprising the steps of: establishing communication with the building automation device over a first communication protocol; installing executable software instructions on the building automation device over the first communication protocol to provide a capability to communicate over a second communication protocol; establishing communication with the building automation device over the second communication protocol; and after communication over the second communication protocol has been established, accepting communication over the first communication protocol for a predetermined duration when the building automation device is powered on. Appeal Br. 12 (Claims App.). REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Livnat et al. (“Livnat”) US 2003/0140129 A1 Jul. 24, 2003 Lee et al. (“Lee”) US 2012/0299509 A1 Nov. 29, 2012 Hill et al. (“Hill”) US 10,142,122 B1 Nov. 27, 2018 REJECTION Claims 1-3, 5-8, 10-13, 15, 17, and 18 stand rejected under 35 U.S.C. § 103 as unpatentable over Livnat, Lee, and Hill. Appeal 2021-001433 Application 15/983,144 3 ANALYSIS We have reviewed the Examiner’s rejection of claims 1-3, 5-8, 10- 13, 15, 17, and 18 over Livnat, Lee, and Hill (Final Act. 2-10) in light of Appellant’s arguments (Appeal Br. 7-10) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Answer (Ans. 8-10) and Appellant’s reply in the Reply Brief (Reply Br. 2-5). We agree with Appellant’s contentions that the Examiner erred in rejecting claims 1-3, 5-8, 10-13, 15, 17, and 18 because the Examiner has not shown sufficiently that the combination of Livnat, Lee, and Hill teaches or suggests all of the recited elements. See Appeal Br. 9-10; Reply Br. 2-5. In particular, the Examiner finds that the combination of Livnat and Lee teaches “establishing communication with the building automation device over the second communication protocol,” as recited in claim 1, and that Hill teaches “accepting communication over the first communication protocol for a predetermined duration when the building automation device is powered on,” as also recited in claim 1. See Final Act. 3-4. The Examiner’s rejection does not address the claim 1 limitation that accepting communication for a predetermined duration over the first communication protocol occurs “after communication over the second communication protocol has been established.” See id. at 2-4. In the Answer, however, the Examiner clarifies that “Livnat teaches accepting communication after communication over the second communication protocol has been established,” pointing to Livnat’s description of an embodiment where a PDA device can use a new protocol after installing a new driver. Ans. 9-10 (citing Livnat ¶¶ 34-35). Appeal 2021-001433 Application 15/983,144 4 Appellant contends the Examiner errs by “dissociat[ing] the timing condition (i.e., ‘after communication over the second communication protocol has been established’) from the clause that the timing condition modifies (i.e., ‘accept[ing] communication over the first communication protocol for a predetermined duration when the building automation device is powered on’).” Reply Br. 3 (second brackets in original). Hill does not cure this deficiency of Livnat, Appellant argues, because the Examiner does not show “that Hill describes any timing aspects related to switching between different communication protocols.” Id. at 4. Appellant has persuaded us that the Examiner has erred. The claim 1 limitation “after communication over the second communication protocol has been established” modifies the limitation “accepting communication over the first communication protocol for a predetermined duration when the building automation device is powered on.” The Examiner has not shown that the combination of Livnat, Lee, and Hill teaches accepting communication over a first communication protocol after communicating over a second communication protocol. Livnat teaches the following: [P]hysically attaching a first electronic device having a first communication protocol to a second device having a plurality of communication protocols, the plurality of communication protocols including the first communication protocol and a second communication protocol, establishing communication between the first and second devices using the first communication protocol, transferring the second communication protocol from the second device to the first device, installing the second communication protocol on the first device, and switching to the second communication protocol for further communication. Livnat ¶ 6. Here, while Livnat teaches further communication according to the second communication protocol after its installment, we do not see, and Appeal 2021-001433 Application 15/983,144 5 the Examiner has not shown, that Livnat teaches reverting back to communication according to the first communication protocol. Hill does not add anything in this respect. The Examiner finds the following with respect to an embodiment in Hill for “commissioning a new hub device 904 for secure communication in the smart home environment” (Hill, 26:54-55): “Hill teaches commissioning a hub device after it is plugged in and powered up. The hub device times out if it is not able to connect to the Internet. Therefore, the hub device accepts communication for a predetermined time when it is powered on.” Final Act. 4 (emphasis omitted). But, it is not evident that Hill’s hub device “accept[s] communication over the first communication protocol for a predetermined duration,” as recited in claim 1, when “a timeout occurs in the commissioning process.” Hill, 30:15. Rather, one of ordinary skill in the art would have understood that a hub device waiting for a timeout period that ultimately expires is not accepting communication at all during such period. Accordingly, the Examiner’s cited portion of Hill does not teach “accepting communication over the first communication protocol for a predetermined duration when the building automation device is powered on,” let alone that such communication occurs “after communication over the second communication protocol has been established.” Moreover, the Examiner’s motivation to combine Hill with Livnat and Lee-that such combination “would provide for a more seamless way to commission devices right out of the box” (Final Act. 4)-does not explain why one would have switched back to a first communication protocol after establishing communication over a second communication protocol. In fact, Appeal 2021-001433 Application 15/983,144 6 Livnat’s embodiment that the Examiner points to in the Answer (see Ans. 9- 10) suggests the opposite. Livnat describes “a PDA (recipient) installed with an MMC slot driver and an expansion card (provider) capable of supporting both MMC and SDIO protocols.” Livnat ¶ 32. If the card receives an initialization or reset command from the PDA that “indicates MMC (step 34b), then the card knows to respond with MMC” and the “card can determine indirectly that SDIO has not been installed.” Id. ¶ 34. Once communication between the PDA and the card is established, if the SDIO driver is not installed, the PDA downloads the driver file from the card and installs it, after which “[t]he new driver overrides the existing driver and the PDA and the card can then switch to using the new SDIO protocol for further communication (step 42).” Id. ¶ 35. Livnat discloses that “[t]he SDIO protocol dictates that if both SDIO and MMC are already installed on the PDA, then the PDA will first signal using SDIO (step 32a).” Id. ¶ 33. So, Livnat teaches that rather than reverting back to MMC (“a first communication protocol”), once SDIO (“a second communication protocol”) is installed, the PDA will default to using SDIO. The Examiner does not provide a rationale for modifying Livnat to use the MMC protocol after the SDIO protocol is installed. For these reasons, on the record before us, we are persuaded that the Examiner erred in finding that the combination of Livnat, Lee, and Hill teaches or suggests the disputed limitations of independent claim 1, as well as of independent claims 6, 11, 13, 15, and 17, which recite commensurate limitations. Appeal 2021-001433 Application 15/983,144 7 Accordingly, we reverse the Examiner’s obviousness rejection of independent claims 1, 6, 11, 13, 15, and 17, as well as dependent claims 2, 3, 5, 7, 8, 10, 12, and 18. DECISION We reverse the Examiner’s decision rejecting claims 1-3, 5-8, 10-13, 15, 17, and 18. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-8, 10-13, 15, 17, 18 103 Livnat, Lee, Hill 1-3, 5-8, 10-13, 15, 17, 18 REVERSED