Ex Parte 7584899 et al

Patent Trial and Appeal Board

Nov 29, 2016

95002040 (P.T.A.B. Nov. 29, 2016)

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.
95/002,040 07/18/2012 7584899 36563-0005RX1 6075
131059 7590 11/29/2016
Honeywell/Husch
Patent Services
101 Columbia Road
P.O. Box 2245
Morristown, NJ 07962
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/29/2016 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
____________________

NEST LABS, INC.1
Requester, Cross-Appellant, Respondent

v.

HONEYWELL INTERNATIONAL, INC.2
Patent Owner, Appellant, Respondent
____________________

Appeal 2016-007604
Inter partes Reexamination Control 95/002,040
Patent US 7,584,899 B23
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1 Nest Labs, Inc. is the real party in interest for the Requester, and is a
wholly-owned subsidiary of Google Inc. (Cross-Appeal Brief of Requester
1).
2 Honeywell International, Inc. is the Patent Owner and the real party in
interest (Appeal Brief of Patent Owner 1).
3 Patent US 7,584,899 B2 (hereinafter “the ’899 Patent”) issued September
8, 2009 to de Pauw et al.
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STATEMENT OF THE CASE
Claims 18, 19, 21–29, 38–43, 54–57, 64–69, 71, and 72 are subject to
reexamination and stand rejected (RAN4 PTOL-2066). Claims 1–17, 20,
30–37, 44–53, 58–63 and 70 have been canceled (id.). The Patent Owner
appeals under 35 U.S.C. §§ 134 and 315 from the Examiner’s rejections with
respect to all of the rejected claims (ABPO 1). The Requester cross-appeals
under 35 U.S.C. §§ 134 and 315 from the Examiner’s refusal to adopt
certain proposed rejections, and the withdrawal of certain previously
adopted rejections as to various reexamined claims (CABR 4–6). We have
jurisdiction under 35 U.S.C. §§ 134 and 315.
In addition to its Appeal Brief, Rebuttal Brief, and Respondent Brief,
the Patent Owner relies on two declarations of Charles Garris in support of
its positions. In addition to its Cross-Appeal Brief, Rebuttal Brief, and
Respondent Brief, the Requester relies on four declarations of David
Auslander in support its positions. We are also informed that the ’899 patent
is involved in a concurrent legal action Honeywell International Inc. v. Nest
Labs, Inc. et al., Civil Action No. 0:12-cv-00299-SRN-JSM (D. Minn.)
(ABPO 1).

4 The Examiner’s Answer incorporates by reference, the Right to Appeal
Notice. While we have considered the entirety of the record on appeal, we
refer to specific portions of the record, abbreviating the documents therein as
follows:
1. Right of Appeal Notice = RAN
2. Appeal Brief of Patent Owner = ABPO
3. Rebuttal Brief of Patent Owner = Reb. Br. PO
4. Respondent Brief of Patent Owner = Res. Br. PO
5. Cross-Appeal Brief of Requester = CABR
6. Respondent Brief of Requester = Res. Br. R
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We AFFIRM with respect to the Appeal of the Patent Owner. The
Cross-Appeal of the Requester is moot.

THE INVENTION
The ’899 Patent is directed to an HVAC controller (Title). Illustrative
independent claims 18 and 19 read as follows (ABPO 33–34, Claims App’x,
italics added):
18. An HVAC controller comprising:
a controller housing having a front face with a central
region;
a liquid crystal display in the central region of the front
face of the controller housing,
wherein the liquid crystal display includes a liquid crystal
display panel and a display retainer housing; and
an annular shaped rotatable interface member disposed
around at least part of the central region of the front face of the
controller housing, and forming part of the front face of the
controller housing, wherein the rotatable interface member
rotates relative to the central region of the front face of the
controller housing, wherein rotation of the rotatable interface
member can be used to adjust one or more operating parameters
of the HVAC controller, at least one of the adjusted parameters
being displayed on the liquid crystal display;
wherein the front face comprises a button;
a switch spaced back further from the front face of the
controller housing than a back surface of the liquid crystal
display panel; and
a button support member for transferring movement of
the button surface to the switch to actuate the switch.

19. An HVAC controller comprising:
a controller housing having a front face with a central
region;
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a liquid crystal display disposed in the central region for
displaying an operating parameter of the HVAC controller;
a rotatable interface member extending around the
central region of the controller housing, the rotatable interface
member being rotatable relative to the central region, wherein
rotation of the rotatable interface member can be used to select
one or more operating parameters of the HVAC controller for
display on the liquid crystal display,
the rotatable interface member moves a surface with
raised portions relative to depressed portions, wherein the
HVAC controller is structured to determine a direction and a
magnitude of rotation of the rotatable interface member by
monitoring movement of at least some of the raised portions as
the rotatable interface member is rotated relative to the central
region; and
a button disposed in the central region of the front face.

I. APPEAL OF THE PATENT OWNER
A. Examiner’s Rejections
The Examiner rejects various claims on appeal in forty (40) different
rejections, which are listed in the RAN (together with 29 non-
adopted/withdrawn rejections) (RAN 3–7). For the sake of clarity and
brevity, we summarize the Examiner’s rejections as follows (see also ABPO
2):
1. Claims 67 and 68 under 35 U.S.C. § 112, second paragraph, as
indefinite (RAN 3, 21–22).
2. Claim 27 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to further limit base claim 22 from which claim
27 depends (RAN 3, 24–26).
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3. Claims 19, 21, 38–43, 54–57, 64–69, and 71 under 35 U.S.C.
§ 103 as obvious over Honeywell 20025 in view of one or more
secondary references (RAN 3–5, 32–146, 148–188).
4. Claims 19, 21, 38–43, 54–57, and 64–69 under 35 U.S.C. § 103
as obvious over Honeywell 20036 in view of one or more secondary
references (RAN 5–6, 192–233, 235–257, 259–274).
5. Claims 18, 19, 21–29, 38–43, 54–57, 64–69, 71, and 72 under
35 U.S.C. § 103 as obvious over Sato7 in view of one or more
secondary references (RAN 6–7, 274–322, 324–338).

B. Analysis
Preliminarily, we note that only those arguments timely made in the
briefs of record in this appeal have been considered. Other arguments not
made or those not properly presented to the Board have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any
arguments or authorities not included in the brief permitted under this
section or §§ 41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown”). In addition, we address the Examiner’s
rejections in an order that differs from the order presented by the parties.

5 Honeywell, Modulating Room Thermostat Installation and Operating
Instructions (2002). We note that there are both German and English
portions in Honeywell 2002.
6 Honeywell, CT8775A, C Digital Round Non-Programmable Thermostats
Owner’s Guide (2003).
7 Sato et al., US 5,819,597, issued Oct. 13, 1998.
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Obviousness Rejection Based on Honeywell 2002
The Examiner rejects claims 19, 21, 38–43, 54–57, 64–69, and 71 as
being obvious over Honeywell 2002 in view of one or more secondary
references (RAN 3–5, 32–146, 148–188). For example, in Rejection XI, the
Examiner rejects independent claim 19 based on the combination of
Honeywell 2002 in view of Tanaka8 and Sato (RAN 32). The Examiner
finds that Honeywell 2002 discloses most of the limitations of claim 19
including changing parameter settings by rotating a rotatable interface
member (RAN 33). The Examiner also finds that:
Honeywell 2002 does not identify structural and functional
details for achieving this objective. Accordingly, Honeywell
2002 does not explicitly describe the rotatable interface member
as moving a surface having raised and depressed portions.
Nonetheless, such a manner of employing rotation to change a
parameter setting was known.
(RAN 33).
In this regard, the Examiner relies on Tanaka for disclosing:
a rotatable interface member (a dial knob 44) to move a slit ring
32 that includes a cylindrical portion 32a having a plurality of
slits 33 (i.e., a surface with depressed portions relative to raised
portions) (see col. 3, line 51 – col. 4, line 42; col. 5, lines 26–
40; Figs. 3–6).
(Id.).
The Examiner further finds that the slit ring of Tanaka is used to
detect rotation of the rotatable interface member and the amount of rotation
(id.). Based on these findings, the Examiner concludes that:

8 Tanaka et al., US 4,8578,677, issued Aug. 15, 1989.
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From Tanaka’s teaching[,] it would have been obvious to one of
ordinary skill in the art to modify Honeywell 2002 so as to
include a surface that has slits (i.e., depressed/raised portions)
and that is moved by the rotatable interface member
(twist/adjust cover ring), and to include detectors for
monitoring/detecting movement of the slits, as the rotatable
interface member is rotated.
(Id.).
The Examiner further finds that although Tanaka does not describe
determining a direction of rotation, this function was known in the art as
evidenced by Sato, and concludes that:
it further would have been obvious to one of ordinary skill in
the art to modify the combination of Honeywell 2002 and
Tanaka, pointed out above, so that the positions of detectors
and the detected raised portions/depressed portions (from the
teaching in Tanaka) are shifted so as to provide four different
outcomes of ON/OFF (or in the case of Tanaka, RECEIVED
LIGHT/NON-RECEIVED LIGHT), to enable a direction of
rotation to be determined, in addition to a magnitude of
rotation.
(RAN 34–35).
We agree with the Examiner’s analysis as to the rejections based on
Honeywell 2002 in combination with various references, and find the Patent
Owner’s arguments unpersuasive for the reasons discussed infra.
The Patent Owner argues that the Examiner “does not provide an
adequate reason why a skilled artisan would have incorporated the rotatable
interface member of Tanaka into the controller of Honeywell 2002, and
modify it according to the teachings of Sato, to yield the invention of claim
19 (RAN at 32–38).” (ABPO 7). According to the Patent Owner, the
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Examiner’s rejection is conclusory and contains no articulated reasoning
with rational underpinnings as required to support the rejection (ABPO 7).
We disagree with the Patent Owner. The position of the Examiner
and the articulated rationale is that Honeywell 2002 discloses a thermostat
that provides various operational features like that of the claimed invention,
but does not disclose the underlying structure or components of the
thermostat for implementing these operational features, and as a result, a
person of ordinary skill in the art would have looked to other prior art
devices, such as Tanaka and Sato, for the underlying structure or
components to implement the thermostat of Honeywell 2002 (RAN 33).
This articulated reasoning for the suggested combination of the prior art
references is supported by rational underpinnings. KSR Int’l v. Teleflex,
Inc., 550 U.S. 398, 418 (2007).
In this regard, we agree with the Requester that the Patent Owner’s
argument:
ignores that the Honeywell 2002 and 2003 references are mere
manuals that do not show the structures for such functionality,
and that a skilled artisan would have been motivated to find
references showing structure to carry out the functionality. This
is not an issue of supplementing the actual thermostats, but in
explaining what would be hidden in the owner’s manuals––i.e.,
while the thermostats were complete, their description in the
manuals was not, so a skilled artisan would have been
motivated to determine the detail that was suggested by, but not
explicit in, the manuals.
(Resp. Br. R 9).
The Patent Owner also argues that:
the Examiner must also show that a skilled artisan could have
combined the elements as claimed by known methods (see,
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MPEP 2143(I)(A)(2)[)], and must further show that one of
ordinary skill would have recognized the results of the
combination were predictable (see, MPEP 2143(I)(A)(3)[)].
The Examiner has not met their [sic] burden regarding either of
these factors; indeed, they [sic] have [sic] not even considered
these factors in their [sic] analysis.
(ABPO 7; see also ABPO 8; Reb. Br. PO 11).
The portion of the MPEP cited by the Patent Owner appears to stem
from KSR wherein the Supreme Court stated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 415–16.
However, we observe that the present rejection is not a combination of
familiar elements such as in providing a rotatable interface member of
Tanaka into a device without an interface, but rather in providing details as
to how the Honeywell 2002 thermostat already having a rotatable interface
member may be implemented in view of its lack of detail as to the structure
enabling the disclosed rotatable interface.
While KSR does not explicitly address the circumstances presented in
the current appeal, the problem may be considered to be lack of structural
detail in Honeywell 2002 such that this problem “can provide a reason for
combining the elements in the manner claimed.” Id. at 420. Hence, the
Patent Owner’s argument is unpersuasive.
The Patent Owner further argues that:
the structure of Honeywell 2002, Tanaka, and Sato are
substantially different from each other, and the Examiner did
not show how the features of Honeywell, Tanaka, and Sato
would have related to each other to result in the claimed
invention.
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(ABPO 7).
Notwithstanding the fact that it is not clear that the structures of
Tanaka and/or Sato are, in fact, substantially different from Honeywell 2002
considering its lack of structural details, we generally agree with the
Requester (Resp. Br. R 9) that the Patent Owner is improperly requiring
explanation as to how to combine the structures of the references.
Moreover, even if Honeywell 2002, Tanaka, and Sato are different, we are
not persuaded that such differences are substantial so as to dissuade the
person of ordinary skill in the art from applying the teachings of these
references in the manner suggested considering their common operation and
function.
The Patent Owner also argues that the Examiner failed to “provide
recognized reason to incur the likely additional effort, complexity and cost
of modifying Honeywell 2002 to somehow include the rotation detection
features of Tanaka modified by Sato, without any disclosed benefit (since
the thermostat of Honeywell 2002 necessarily has a mechanism to perform
these functions).” (ABPO 8). Again, the premise of the Examiner’s
rejection is to fill in the structural details that are missing in Honeywell 2002
for implementing its disclosed operation and function. In this regard, as the
Requester responds, Honeywell 2002 is a reference manual that is
incomplete and does not show the structures for such functionality so “a
skilled artisan would have been motivated to find references showing
structure to carry out the functionality.” (Resp. Br. R. 9; see also Resp. Br.
11; 3rd Decl. Auslander ¶¶ 10–13; 4th Decl. Auslander ¶¶ 6–7).
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As to the asserted increase in cost, the fact that a substitution would
not be made by businessmen for economic reasons does not mean that it
would not have been obvious to a person of ordinary skill in the art to make
such a substitution, or that such a person would not make the substitution.
See Orthopedic Equipment Company, Inc. et al. v. United States, 702 F.2d
1005, 1013 (Fed. Cir. 1983) (“the fact that the two disclosed apparatus
would not be combined by businessmen for economic reasons is not the
same as saying that it could not be done because skilled persons in the art
felt that there was some technological incompatibility that prevented their
combination. Only the latter fact is telling on the issue of
nonobviousness.”).
According to the Patent Owner:
If it was obvious to modify a primary reference to include a
missing claim element merely because it does not show details
of the claim element, then in this situation every combination of
relevant known prior art elements would be obvious, nullifying
KSR’s requirement for identifying a reason to combine.
Examiners would be incented to apply the least detailed
primary reference they could find, and then combine it with any
secondary reference that discloses a particular claimed feature.
(ABPO 8–9).
However, as already discussed, the Examiner articulated a reason with
rational underpinnings sufficient to support the obviousness rejection made
as required. KSR, 550 U.S. at 418. Moreover, the Examiner clearly did not
just “apply the least detailed primary reference.” The review of Honeywell
2002 clearly establishes its relevance to the claims in that it illustrates a
Modulating Room Thermostat that generally resembles the HVAC controller
illustrated in the ’899 Patent (compare Honeywell 2002, pgs. 11–12, 19 with
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the ’899 patent, Figs. 1–2), and similar to the subject matter of the ’899
patent, Honeywell 2002 specifically discloses controlling and changing the
set temperature by rotating an adjusting ring, as well as a button switch on
the front surface of the thermostat (Honeywell 2002, pgs. 22–23). Thus, the
relevance of Honeywell 2002 cannot be reasonably disputed.
The Patent Owner submits similar arguments as those discussed above
with respect to rejections based on the combination of Honeywell 2002 in
view of: Zexel9 (ABPO 9–10); Tanaka, Sato, and Robertshaw10 (ABPO 10–
11); Zexel and Robertshaw (ABPO 11); Sato and Karhu11 (ABPO 15–16);
and Tanaka (ABPO 16). However, these arguments are unpersuasive for
substantially the same reasons discussed supra.
As to application of Karhu, the Patent Owner also argues that
changing from a mechanical switch arrangement to a pure optical
arrangement “would require extensive changes to Sato’s controller, and in
fact would change the principle of operation of the device.” (ABPO 16).
The Examiner agrees with Requester that:
A person of ordinary skill in the art would have been prompted
to modify the thermostat resulting from the combination of
Honeywell 2002 and Sato to include Karhu’s optical switches
so that the mechanism for detecting rotation of the rotatable
interface member would be less susceptible to mechanical
failure due to the physical wear and tear on electromechanical
switches over time. (See Auslander Decl. at ¶ 21.)
(RAN 73, quoting Comments filed December 31, 2012, pgs. 87–88).

9 Zexel, EP 1 276 123 A1, published Oct. 24, 2000.
10 Robertshaw, 9400 Digital Non-Programmable Thermostat, User’s Manual
(2002).
11 Karhu, US 6,535,461 B1, issued March 18, 2003.
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We agree with the Examiner. While substitution of an electro-
mechanical switch arrangement with an electro-optical switch arrangement
would be required, nothing indicates that such change is so extensive as to
dissuade a person of ordinary skill in the art from such a substitution.
Although an electro-optical switch arrangement would be used, the broader
principle of operation of the thermostat adjustment via rotation of a rotatable
interface member is not changed by the proposed substitution. In an
analogous case, the Federal Circuit found that changing from a mechanical
to an electrically based technology would have been obvious. Specifically,
the court concluded that it would have been obvious to modify a mechanical
device for actuating a phonograph to play back sounds associated with a
letter in a word on a puzzle piece with an electronic, processor-driven device
capable of playing the sound associated with a first letter of a word in a
book. Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed.
Cir. 2007) (“[a]ccommodating a prior art mechanical device that
accomplishes [a desired] goal to modern electronics would have been
reasonably obvious to one of ordinary skill in designing children’s learning
devices”). We find the facts of this case to be analogous wherein an electro-
mechanical switch arrangement in the art of thermostatic control devices, is
substituted with a known electro-optical switch arrangement, also in the art
of thermostatic control devices.
In addition, while the Patent Owner also argues that there is no
evidence that physical contact between parts was a known problem that
would be solved by the proposed combination (Reb. Br. PO 16–17), wearing
of parts over time due to physical contact is a well-known fact in all
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mechanical and electro-mechanical arts, and is also common sense. Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1367 (Fed. Cir. 2006) (obviousness analysis requires “consideration of
common knowledge and common sense.”). In the Examiner’s rejection
(RAN 73), the application of a known electro-optical switch arrangement is
not based on addressing a specific problem, but rather, improving the
durability thereof by reducing susceptibility to physical wear and tear. In
this regard, an implicit motivation to combine has been found to exist when
the improvement is technology-independent and the combination of
references results in a product that is more desirable, for example, more
durable. Dystar, 464 F.3d at 1368.
As to claims 38, 39, and 41 that require “a sensor circuit board
connected to and extending substantially perpendicular to the main circuit
board,” the Patent Owner argues that “the supposed reason to combine the
references (to move a temperature sensor away from heat emitted by a main
circuit board) is purely speculative,” and that “there is no evidence this
problem is recognized in the prior art or even exists.” (ABPO 11; see also
Reb. Br. PO 10–11; RAN 53–55). The Patent Owner also argues that “it is
possible to mount a temperature sensor on a thermostat’s circuit board and
avoid problems caused by heat generated by the circuit board,” without
using a motherboard-daughterboard arrangement of Yamatake12 (ABPO 11–
12), which the Examiner relied upon for disclosing such an arrangement.
According to the Patent Owner, the Examiner’s contention is based on
hindsight because there is “no recognized reason to incur the likely

12 Yamatake-Honeywell, JP H9-298780 (1997).
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additional effort, complexity and cost” without any disclosed benefit, and
that there is also no reasonable expectation of success (ABPO 12).
We are not persuaded by the Patent Owner’s arguments and generally
agree with the Requester that:
it is a simple fact of physics that when electricity is consumed,
it turns into heat, so that electronic components on the
motherboard of the Honeywell thermostat would generate heat,
and thus a skilled artisan would be motivated to move a
temperature sensor away from such components.
(Resp. Br. R. 12; see also 2nd Decl. Auslander ¶ 14).
We agree that it is well-known that heat is generated as electrical
current moves through electronic circuits. In addition, Schindler recognizes
that it is desirable to provide the sensor outwardly extending from the circuit
board to extend away therefrom in order to improve accuracy of the
temperature reading, and to avoid measuring the temperature of the wall or
the heat from the operator’s hand (Schindler, col. 1, ll. 50–62). Hence,
mounting the temperature sensor away from the main circuit board so that it
extends outwardly would have been desirable and obvious to one of ordinary
skill in the art in order to achieve higher level of accuracy in sensing the
room temperature by the temperature sensor. Moreover, as to the assertion
of the Patent Owner that there is no evidence of this “problem,” the thrust of
the rejection is that improved accuracy in the sensed temperature can be
attained by considering the heat generated by the circuit board, and
correspondingly mounting the sensor so as to avoid the impact of this
generated heat.
As to mounting the sensor board perpendicular to the main circuit
board, we generally agree with the Requester that “the mere existence of
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alternative arrangements for mitigating circuit board heat in the prior art
does not impact the obviousness.” (Resp. Br. R. 12). While Schindler
moves the sensor outwardly without using a daughter board, prior art
Yamatake establishes that another manner of mounting the sensor
outwardly, i.e., by using a daughter board that extends perpendicularly away
from the main circuit board, was also known and within the skill of those in
the art. Correspondingly, it would have been obvious to a person of ordinary
skill in the art to utilize either technique to mount the sensor outwardly from
the main circuit board. Furthermore, as previously explained, costs is not
dispositive on the issue of obviousness. Orthopedic, 702 F.2d at 1013.
Moreover, it is unclear why there would be no reasonable expectation of
success considering mother-daughter board arrangements are known and
used.
The Patent Owner further submits substantially the same arguments
with respect to claim 40, 42, 43 that depend from claim 38, these claims
having been rejected over Honeywell 2002 in view of: Yamatake,
Schindler,13 and Umezawa14 (ABPO 13–14); Yamatake, Schindler and Sato
(ABPO 14); and Yamatake, Schindler, and Iwatare15 (ABPO 14). However,
these arguments are likewise unpersuasive.
The Patent Owner also argues that rejection of claims 64–66 based on
Honeywell 2002 in view of Denso16 and Bougsty17 is improper because the

13 Schindler et al., US 5,008,775, issued April 16, 1991.
14 Umezawa, US 4,975,766, issued Dec. 4, 1990.
15 Iwatare et al., US 5,259,784, issued Nov. 9, 1993.
16 Denso, JP 2003-054290, published Feb. 26, 2003.
17 Bougsty, 4,789,224, issued Dec. 6, 1988.
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thermostat of Honeywell 2002 already mounts its display panel securely so
there is no reason to provide a display retainer housing, and the Examiner
fails to provide a reason to incur the likely additional effort, complexity and
cost of modifying Honeywell 2002 without any benefit (ABPO 16–17). In
addition, the Patent Owner notes that claim 66 further recites through holes
and support legs extending through holes in the circuit board for mounting
the display, but the rejection merely asserts a skilled artisan would have
incorporated the structure of Bougsty into the Honeywell 2002 thermostat
(ABPO 18).
However, these arguments are unpersuasive because while the device
of Honeywell 2002 already mount its display, it does not disclose the
manner in which the display is mounted. Hence, it would have been obvious
for a person of ordinary skill in the art to look to other prior art references
for appropriate mounting structure and methods, which includes mounting
the display using a display retainer housing, and providing through holes and
support legs as disclosed in the applied prior art relied upon by the
Examiner.
The Patent Owner also relies on arguments addressed above with
respect to rejection of claims 67 and 68 over Honeywell 2002 in view of:
Tanaka, Yamatake, Sato and Haga18 (ABPO 18–19); Haga and Yamatake
(ABPO 20–21); Zexel, Yamatake and Haga (ABPO 22–24); as well as with
respect to rejection claim 69 based on Honeywell 2002 in view of: Tanaka,
Bougsty, Haga and Sato (ABPO 24–25); Haga and Bougsty (ABPO 25–26);

18 Haga et al., US 5,749,005, issued May 5, 1998.
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and Zexel, Haga and Bougsty (ABPO 27). However, these arguments are
unpersuasive as already addressed supra.
Additionally, the Patent Owner argues that it would not have been
obvious to space a button switch “back further from the front face than a
back surface of the liquid crystal display panel” as required by claims 68 and
69 (ABPO 20, 26). In this regard, the Patent Owner argues that Figure 3 of
Haga relied upon by the Examiner for disclosing such a relationship “clearly
shows its switch 82 is spaced back from its front face the same amount as
display panel 28A.” (Id.; see also Reb. Br. PO 17). The Patent Owner’s
assertion is without merit. The Examiner explained that “the space
enclosing the display does not constitute the display.” (RAN 160, 175).
Indeed, Figure 3 of Haga shows a sectional view in which button switch 82
is spaced back further from the face of rotary dial 32 than the back surface of
display panel 28A (Haga, Fig. 3, col. 4, ll. 5–44; see also Resp. Br. R. 15).
The Patent Owner does not appear to understand that the display of Haga is
depicted in Figure 3 as the narrow parallel lines, and not the entire space in
which the narrow parallel lines reside.
Therefore, we affirm the Examiner’s rejection of claims 19, 21, 38–
43, 54–57, 64–69, and 71 as being obvious over Honeywell 2002 in view of
one or more secondary references as set forth in the RAN.

Obviousness Rejections Based on Honeywell 2003
Claims 19, 21, 38–43, 54–57, and 64–69 stand rejected as obvious
over Honeywell 2003 in view of one or more secondary references (RAN 5–
6, 192–233, 235–257, 259–274). The Patent Owner argues that Honeywell
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2002 and Honeywell 2003 are “similar in all relevant respects,” and relies on
the same arguments submitted with respect to the rejections based on
Honeywell 2002 in support of patentability of the claims over the rejections
based on Honeywell 2003 in combination with one or more secondary
references (ABPO 28). Thus, for the reasons already discussed, we are not
persuaded that the Examiner erred. We further observe that in many aspects,
the disclosure in Honeywell 2003 is even more pertinent than the disclosure
in Honeywell 2002 in terms of general functionality and structural
resemblance to the HVAC controller disclosed in the Specification of the
’899 patent (compare the ’899 patent, Figures 1, 2 with Honeywell 2003,
pgs. 2, 10–13). Correspondingly, we affirm the Examiner’s rejection of
claims 19, 21, 38–43, 54–57, and 64–69 as being obvious over Honeywell
2003 in view of one or more secondary references as set forth in the RAN.

Obviousness Rejections Based on Sato
The Examiner rejects claims 18, 19, 21–29, 38–43, 54–57, 64–69, 71,
and 72 as obvious over Sato in view of one or more secondary references
(RAN 6–7, 274–322, 324–338). For example, in Rejection LIX, the
Examiner rejects independent claim 18 based on the combination of Sato in
view of Denso (RAN 274). The Examiner finds that Sato discloses an
HVAC controller with most of the limitations of claim 18 including a
rotation detecting device having an outer knob member that changes the set
room temperature based on the direction and amount of rotation of the outer
knob member (id. at 275, 276). The Examiner also finds that while Sato
discloses a display in the central region of the front face, it does not disclose
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structural details for the display unit 20/20a (id. at 275). The Examiner
relies on Denso for disclosing such a display retainer housing within a
rotatable interface member of a temperature controller, and agrees with the
Requester that it would have been obvious to a person of ordinary skill to
incorporate a display retainer housing (i.e., bracket 11) of Denso for the
display panel of the Sato controller “so that the display panel is sufficiently
‘supported and secured .., to the printed circuit board’ underlying the display
panel.” (RAN 275–76, citing Requester’s Comments dated December 31,
2012, pg. 215).
The Examiner further finds that:
Sato does not further describe a button having a surface on the
front face of the controller. Nonetheless, using a button on a
HVAC controller is well known. Regarding this, Denso further
describes a ‘pressing [action] to activate the rotary dial knob 12
in the left direction of FIG. 3’ (see paragraph [0031]; Fig. 3).
(RAN 276).
Moreover, the Examiner also relies on Denso’s further teaching of
separating the pressing button function from the rotary dial knob by
providing a button separate from the rotary dial knob (RAN 276–277; see
also Denso ¶ [50](6)), and agrees with the Requester that:
it would have been obvious to one of ordinary skill in the art to
have modified the controller of Sato based on the teachings of
Denso regarding a pressed button, and thus to have provided the
controller of Sato with a button as part of the housing front face
thereof, for performing an operation associated with the
controller.
(RAN 277).
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Like the rejections based on Honeywell 2002 and Honeywell 2003
discussed supra, the Patent Owner argues that “the Examiner does not
provide an adequate reason why a skilled artisan would have incorporated
the display retainer housing, button, button support member and switch of
Denso into Sato’s controller.” (ABPO 29). However, this argument is
unpersuasive because as set forth above, the Examiner has set forth a reason
with rational underpinnings for combining the references in the manner
suggested such as the lack of detail in Sato as to mounting of its display
panel, and the disclosure in Denso of providing a button (i.e., tact switch 17)
to set a plurality of operation signals including those corresponding to
various HVAC system operation or parameters (Denso, Abstract, ¶¶ 12, 40,
claims 1, 4).
The Patent Owner argues that “the RAN did not articulate what
components were substituted in Sato (indeed, since no button is in Sato, how
can it be substituted?), nor was an analysis provided for why the results of
the supposed substitution would have been predictable.” (ABPO 29).
However, this argument is unpersuasive because the proposed combination
does not substitute a button to the controller of Sato, but rather, adds a
button to Sato (RAN 275).
The Patent Owner also argues that “there is no evidence in the record
that an additional input is needed in Sato” (Reb. Br. PO 18), and that
“adding a switch as proposed by the Examiner would change the principal
[sic] of operation of Sato (there is no demonstrated need in Sato for an
additional input), and [] it would also render Sato unsuitable for its intended
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purpose (the switches which determine knob position would be inadvertently
activated if the knob could also be pressed).” (ABPO 29).
However, the articulated rejection relies on the teaching of Denso that
provides a button separate from the rotary dial knob, which would not be
actuated by the knob (RAN 276–277). In addition, providing additional
controller input is disclosed in Denso itself, and as the Examiner states,
“Denso’s teaching regarding a button operation that will increase controller
input is sufficient as a teaching for including a button operation with Sato’s
controller.” (RAN 295). Moreover, it would have been entirely obvious to
those of ordinary skill in the art to incorporate a button to control the HVAC
controller as desired, and it is also generally desirable to provide additional
features and capability to the controller, which would have led to providing
additional input control. In this regard, as already noted, an implicit
motivation to combine has been found to exist when the improvement is
technology-independent and the combination of references results in a
product that is more desirable. See Dystar, 464 F.3d at 1368.
The Patent Owner argues that, as to claims 54–57, the Examiner’s
reason for substituting Denso’s optical rotary device into Sato because
Sato’s rotary switch would wear over time makes no sense because wear
comes through use and not through time (ABPO 29–30). The Patent Owner
also argues that there is no evidence that contact leading to wear was a
known problem (Reb. Br. PO 18). These arguments are unpersuasive. The
Examiner stated that “one having ordinary skill in the art would have readily
recognized that, over time, the physical interaction of components, such as
those of Sato, would cause wear and tear that could eventually result in
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failure of the device.” (RAN 297). Thus, the Examiner makes clear that it is
the physical interaction of components that causes wear and tear over time.
As stated by the Requester, “the RAN’s description of mechanical wear and
tear over time implies use over time, and a skilled artisan would readily
appreciate that.” (Resp. Br. R 16–17). Moreover, as previously noted,
wearing of parts due to physical contact is not only a well-known fact, but is
also common sense.
The Patent Owner argues that Sato teaches against rotary encoder
types of devices disclosed in Denso because they are expensive (ABPO 30,
citing Sato, col. 2, ll. 9–12), and the proposed combination “would require a
complete replacement of the physical components of Sato and additional
electronic circuitry and software, and its undesirable expense.” (ABPO 30).
However, as explained supra, the fact that a combination would not be made
by businessmen for economic reasons does not mean that such a
combination would not have been obvious to a person of ordinary skill in the
art. See Orthopedic Equipment, 702 F.2d at 1013 (Fed. Cir. 1983). In
addition, while replacement of electronic components and software would
have been required, the evidence indicates that such substitution was well
within skill of those in the art as evidenced by application of the rotary
encoder type device in the HVAC controller of Denso itself.
As to rejection of claims 38, 39, 41, 42, 67, and 68 based on Sato in
view of Yamatake and Denso, the Patent Owner relies on the unpersuasive
arguments already discussed supra (ABPO 30). The Patent Owner further
argues that Sato and Denso do not disclose a controller having a temperature
sensor because in automobiles, the temperature sensor could be remote from
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the controller (ABPO 30; see also Reb. Br. PO 19). While we do not dispute
this assertion of the Patent Owner, locating the temperature sensor at an
already well-known location (i.e., in the HVAC controller), and in a manner
taught by Yamatake would have been an obvious design choice to a person
of ordinary skill in the art. Accordingly, we agree with the Examiner that:
it would have been obvious to one of ordinary skill in the art to
modify the controller of Sato based on the teachings of
Yamatake[] regarding placement of a temperature sensor and a
sensor circuit board in relation to a main circuit board, to
provide said controller with a sensor on a sensor circuit board
and provide the location of the sensor circuit board wherein it
extends in a plane substantially perpendicular relative to a main
circuit board of the controller.
(RAN 306).
Moreover, we also note that altering a position of a component in a
device does not render the device patentable. See In re Japikse, 181 F.2d
1019, 1032 (CCPA 1950) (specific positioning of a starting switch of a
hydraulic power press held unpatentable because shifting the position of the
starting switch would not have modified the operation of the device); In re
Kuhle, 526 F.2d 553, 555 (CCPA 1975) (particular placement of a contact in
a conductivity measuring device is an obvious matter of design choice).
As to the rejection of claim 43, which further relies on Iwatare for
teaching a sensor circuit board on the perimeter of the main circuit board,
the Patent Owner asserts that the prior arguments are equally applicable
(ABPO 31). Hence, the Patent Owner’s arguments are unpersuasive of
Examiner error for the reasons already discussed. As to rejection of claims
64–66 and 69 over Sato in view of Denso and Bougsty, the Patent Owner
relies on substantially the same unpersuasive arguments already addressed
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supra (ABPO 32). As to claims 21, 24, 40, 71, and 72 that stand rejected
over the combination of Sato, Denso, and Kuenzner,19 the Patent Owner
relies on their dependency on claims 18 and 22 for patentability (ABPO 30–
31). Hence, these claims fall with claims 18 and 22.
In view of the above, we affirm the Examiner rejection of claims 18,
19, 21–29, 38–43, 54–57, 64–69, 71, and 72 as obvious over Sato in view of
one or more secondary references as set forth in the RAN.

Indefiniteness Rejections
Rejections 1 and 2 are rejections of claims 27, 67, and 68 under
35 U.S.C. § 112, second paragraph, as indefinite (RAN 3, 21–26). However,
each of these claims stand rejected under one or more prior art rejections
discussed supra. Correspondingly, Rejections 1 and 2 are moot, and we
decline to reach the same.

C. Conclusions With Respect to Appeal of the Patent Owner
The Examiner’s prior art Rejections 3–5 are AFFIRMED so that each
of claims 18, 19, 21–29, 38–43, 54–57, 64–69, 71, and 72, subject to the
present Appeal of the Patent Owner remains rejected.

19 Kuenzner, US 6,744,374 B1, issued June 1, 2004.
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II. CROSS-APPEAL OF REQUESTER
The Examiner declined to adopt or withdrew various rejections (RAN
3–7). The Requester cross-appeals the following rejections:
1. Claims 18, 29, 41, and 67–69 under 35 U.S.C. § 112 as lacking
written description support (CABR 4) for the claim terms: “front face
comprises a button” (CABR 7); “situated in the volume” (CABR 12); and
“moving a surface having a plurality of markings” (CABR 13).
2. Claims 28, 42, 67, and 68 under 35 U.S.C. § 112 as lacking
written description support (CABR 5) for the claim terms: “visual change”
(CABR 15); “detectors” (CABR 16); “markings” (CABR 16); and
“monitoring movement” (CABR 17).
3. Claims 42 and 67–69 under 35 U.S.C. § 112 as indefinite for
(CABR 5–6) for the claim terms: “detectors” (CABR 17); “monitoring
movement of …markings” (CABR 18); “monitoring movement of
…features” (CABR 19); and “moving a surface” (CABR 20).
4. Claims 18, 22–29, 67–69, and 72 as obvious under 35 U.S.C.
§ 103 over combinations of Honeywell 2002 in view of Denso (and other
secondary references), and combinations of Honeywell 2003 in view of
Denso (and other secondary references) (CABR 6, 20).
5. Claims 22–28 and 72 as obvious under 35 U.S.C. § 103 for the
same reasons applied against claims 67 and 68 (CABR 6, 27).

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However, as set forth above, the Examiner’s prior art Rejections 3–5
stand AFFIRMED so that each of the claims cross-appealed by the
Requester remains rejected. Correspondingly, the Cross-Appeal of the
Requester is moot, and we decline to reach the same.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Honeywell/Husch
Patent Services
101 Columbia Road
P.O. Box 2245
Morristown, NJ 07962

Third Party Requester:

Fish & Richardson PC (TC)
P.O. Box 1022
Minneapolis, MN 55440-1022