Ex Parte Cornwall et al

Patent Trial and Appeal Board

Apr 21, 2016

12889610 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/889,610 09/24/2010
99269 7590
ITRON, INC
Itron-IP - Docketing
2111 N. Molter Road
Liberty Lake, WA 99019
04/25/2016
FIRST NAMED INVENTOR
Mark K. Cornwall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OC0-164 6635
EXAMINER
BALSECA, FRANKLIN D
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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):
Itron-IP@itron.com
LuAnne.DeSantis@itron.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK K. CORNWALL, and JAMES P. OGLE
Appeal2014-006846
Application 12/889,610
Technology Center 2600
Before ST. JOHN COURTENAY, III, CATHERINE SHIANG, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 8, 9, 11-13, and 21-35, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.
STATEMENT OF THE CASE
Introduction
The present invention relates to meter reading systems. See generally
Spec. 1. Claim 29 is exemplary:
Appeal2014-006846
Application 12/889,610
29. A method in an endpoint device for gathering corrected
and uncorrected data for utility measurements at a utility usage
location, comprising:
determining uncorrected utility usage data associated
with the utility usage location;
requesting corrected utility usage data from an associated
telemetry device;
receiving the corrected utility usage data from the
telemetry device;
storing the corrected utility usage data; and
transmitting the corrected utility usage data or the
uncorrected utility usage data to a centralized data collection
facility via a bidirectional collection network;
wherein the steps of requesting, receiving, and storing the
corrected utility usage data are performed on a periodic basis.
References and Rejections
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shuey (US 2008/0219210 Al; pub. Sep. 11, 2008), Geery
(US 4,238,825; iss. Dec. 9, 1980), and Kim (\VO 2007/037616 1A .. l; pub. Apr.
5, 2007).
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shuey, Geery, Kim, and Batz (US 3,815, 126; iss. June 4,
1974).
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Shuey, Geery, Kim, and Whitaker (US 2008/0180275 Al; pub. July 31,
2008).
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Shuey, Geery, Kim, Guthrie (US 2008/0074285 Al; pub. Mar. 27,
2008), and Cardozo (US 7,301,475 B2; iss. Nov. 27, 2007).
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Application 12/889,610
Claims 22-24, 26 and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kim, Geery, Shuey, and Guthrie.
Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kim, Geery, Shuey, Guthrie, Whitaker, and Bond (US 7,337,078 B2;
iss. Feb. 26, 2008).
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kim, Geery, Shuey, Guthrie, and Batz.
Claims 29, 30 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Geery and Shuey.
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Geery, Shuey, Kim, and Cumeralto (US 2002/0109607 Al; pub. Aug.
15, 2002).
Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Geery, Shuey, Kim, Cumeralto, and Bovankovich (US 7,688,220 B2;
iss. Mar. 30, 2010).
Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Geery, Shuey, and Guthrie.
Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Geery, Shuey, Whitaker, and Fong (US 3,944,723; iss. Mar. 16, 1976).
PRINCIPLES OF LAW
"[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
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Application 12/889,610
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Kahn, 441F.3d977, 990
(Fed. Cir. 2006) (citation omitted).
The "mere disclosure of alternative designs does not teach away" and
"just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes." In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
"Although a reference that teaches away is a significant factor to be
considered in determining unobviousness, the nature of the teaching is
highly relevant, and must be weighed in substance. A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use." In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
ANALYSIS
The Obviousness Rejections
On this record, we find the Examiner did not err in rejecting claim 29.
Appellants contend the cited references do not explicitly teach "[a]
method in an endpoint device ... comprising: ... requesting corrected
utility usage data from an associated telemetry device ... wherein the ...
requesting ... [is] performed on a periodical basis," as recited in claim 29,
and the Examiner does not provide any evidence to show the claim
limitation would have been obvious. See App. Br. 8-12. Further,
Appellants assert because Shuey does not teach correctors combined with
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Application 12/889,610
endpoints, and Geery does not teach the endpoint periodically requesting
data from the corrector device, neither reference teaches the claimed
requesting, receiving and storing steps. See App. Br. 9-1 O; see also Reply
Br. 2-5. Appellants contend the combination is incapable of performing the
claimed invention, because "Geery's corrector does not contain a memory ..
. for storing data or receiving requests." App. Br. 13. Appellants argue
"Geery' s corrector constantly outputs the digital output signal and, therefore,
teaches away from periodic supply of stored corrected utility usage data."
App. Br. 10.
Appellants have not persuaded us of error.
First, in response to Appellants' arguments, the Examiner provides
comprehensive findings showing Shuey and Geery collectively teach "[a]
method in an endpoint device ... comprising: ... requesting corrected
utility usage data from an associated telemetry device ... wherein the ...
requesting ... [is] performed on a periodical basis." Specifically, the
Examiner maps Shuey's element 306 to the claimed endpoint device, and
explains how Shuey's element 306 requests the relevant data, and why it
inherently has a memory. See Ans. 3. The Examiner further cites Geery for
teaching the claim element "corrected," and Shuey's paragraph 87 for
teaching "performed on a periodical basis." See Ans. 2-3. Appellants fail to
adequately respond to such findings and therefore, fail to show specific fault
in the Examiner's findings. See In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) ("It is not the function of this court [or this Board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.").
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Application 12/889,610
Second, because the Examiner relies on the combination of Shuey and
Geery to teach claim 29, Appellants cannot establish nonobviousness by
attacking the references individually. See In re Merck & Co., 800 F .2d
1091, 1097 (Fed. Cir. 1986). Contrary to Appellants' argument, neither
Shuey nor Geery needs to teach the entire claim by itself. In particular,
because the Examiner cites Geery for teaching the claim element
"corrected," Shuey does not need to teach that claim element again.
Third, as discussed above, the Examiner reads the claimed endpoint
on Shuey's element 306---not on Geery's corrector. Therefore, Appellants'
argument that "Geery' s corrector does not contain a memory ... for storing
data or receiving requests" (App. Br. 13) is unpersuasive of error because
Appellants fail to address the Examiner's specific findings.
Finally, Appellants' argument that "Geery' s corrector constantly
outputs the digital output signal and, therefore, teaches away from periodic
supply of stored corrected utility usage data" (App. Br. 10) is unpersuasive
because Appellants fail to provide adequate analysis under the correct case
law. In particular, Appellants fail to assert-let alone show---one skilled in
the art "would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." Kahn, 441 F.3d at 990. Further, as discussed
above, the Examiner cites Shuey-not Geery-for teaching "performed on a
periodical basis."
Accordingly, we sustain the Examiner's rejection of claim 29, and
correspond dependent claims that Appellants do not separately argue.
Regarding independent claim 8, Appellants advance arguments
similar to those discussed above with respect to claim 29. See App. Br. 13-
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19. For similar reasons discussed above, Appellants' arguments are
unpersuasive. In particular, in response to Appellants' arguments, the
Examiner provides comprehensive findings showing Shuey, Geery and Kim
collectively teach the disputed claim limitations. See Ans. 4--5. Appellants
fail to adequately respond to such findings and therefore, fail to show
specific fault in the Examiner's findings. See Baxter Travenol Labs., 952
F.2d at 391. Accordingly, we sustain the Examiner's rejection of claim 8,
and correspond dependent claims that Appellants do not separately argue.
Regarding independent claim 22, Appellants advance arguments
similar to those discussed above with respect to claim 29. See App. Br. 19-
23. For similar reasons discussed above, Appellants' arguments are
unpersuasive. In particular, in response to Appellants' arguments, the
Examiner provides comprehensive findings showing Shuey, Geery and Kim
collectively teach the disputed claim limitations. See Ans. 6-7. Appellants
fail to adequately respond to such findings and therefore, fail to show
specific fault in the Examiner's findings. See Baxter Travenol Labs., 952
F.2d at 391. Accordingly, we sustain the Examiner's rejection of claim 22,
and correspond dependent claims that Appellants do not separately argue.
Separately Argued Dependent Claims
Regarding dependent claim 13, Appellants conclusively assert
Whitaker "does not teach 'said corrector telemetry devices are responsive to
changes to alarm parameters sent thereto via said bidirectional main
communications network' in any fashion," and the Examiner fails to provide
any teaching that would render the disputed claim limitation obvious. App.
Br. 24; see also App. Br. 25.
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Application 12/889,610
Appellants' assertion is unpersuasive because Appellants fail to
provide adequate analysis to support the assertion. Further, in response to
Appellants' argument, the Examiner provides comprehensive findings
showing Shuey, Geery, Kim, and Whitaker collectively teach the disputed
claim limitation. See Ans. 7-8. Appellants fail to adequately respond to
such findings and therefore, fail to show specific fault in the Examiner's
findings. See Baxter Travenol Labs., 952 F.2d at 391. Accordingly, we
sustain the Examiner's rejection of dependent claim 13.
Regarding dependent claim 31, the Examiner does not specifically
map the claim limitations "identifying when the telemetry device is
malfunctioning; and transmitting the uncorrected utility usage data as one of
a second bubble-up message or in response to a two-way command
exchange when the telemetry device is malfunctioning." See Final Act. 18-
19. Instead of providing a specific mapping of each claimed step to the
corresponding feature in the reference, the Examiner merely asserts it would
have been obvious for one skilled in the art to implement the above claim
limitations. See Final Act. 18-19. Appellants argue such assertion is
inadequate, as the Examiner cites no evidence to support the assertion. See
App. Br. 28. The Examiner's response does not cite any evidence
supporting the assertion. See Ans. 8. Nor does the response provide specific
mapping for the disputed claim limitations. See Ans. 8. Because the
Examiner has not sufficiently mapped the disputed claim limitations, we are
constrained by the record to reverse the Examiner's rejection of dependent
claim 31.
Regarding dependent claim 35, Appellants assert that Fong does not
teach "receiving an alarm pulse from the telemetry device; querying the
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Application 12/889,610
telemetry device to determine a cause of the alarm; requesting a current data
value from the telemetry device; and transmitting a special alarm message to
the centralized data collection facility via the bidirectional collection
network, the special alarm message indicating the cause of the alarm and
including the current data value," as recited in claim 35. See App. Br. 29-
31. In particular, Appellants argue Fong's central station performs those
steps, but dependent claim 35 requires those steps be performed "in the
endpoint device," as recited in the preamble of independent claim 29. See
App. Br. 29-31. Appellants contend Fong teaches away from the claim
because it performs the steps in the central station. See App. Br. 30.
Appellants' assertion is unpersuasive. Because the Examiner relies on
the combination of Shuey, Geery, and Fong to teach claim 29, Appellants
cannot establish nonobviousness by attacking Fong individually. See Merck
& Co., 800 F .2d at 1097. As discussed above with respect to claim 29, the
Examiner finds Shuey and Geery collectively teach "in the endpoint device,"
and Appellants fail to show such finding is unreasonable. As a result, the
Examiner does not need to show Fong also teaches that claim element. In
any event, the Examiner further explains that Fong also teaches performing
the claimed steps in the endpoint device. See Ans. 9. Appellants fail to
adequately respond to such findings and therefore, fail to show specific fault
in the Examiner's findings. See Baxter Travenol Labs., 952 F.2d at 391.
Further, Appellants' teaching away argument is unpersuasive because
Appellants fail to provide adequate analysis under the correct case law. In
particular, Appellants fail to assert-let alone show---one skilled in the art
"would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
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applicant." Kahn, 441 F.3d at 990. Accordingly, we sustain the Examiner's
rejection of dependent claim 3 5.
DECISION
We affirm the Examiner's decision rejecting claims 8, 9, 11-13, 21-
30, and 32-35.
We reverse the Examiner's decision rejecting claim 31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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