Ex Parte Ha et al

Patent Trial and Appeal Board

Apr 30, 2015

12265304 (P.T.A.B. Apr. 30, 2015)

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.
12/265,304 11/05/2008 Wai-leung Ha 011398.00060 1888
22908 7590 05/01/2015
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
LAUGHLIN, NATHAN L
ART UNIT PAPER NUMBER
2127
MAIL DATE DELIVERY MODE
05/01/2015 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 WAI-LEUNG HA, WANCHAI, KAIRY KAI LEI, and
HAO-HUI HUANG
____________

Appeal 2013-002287
Application 12/265,304
Technology Center 2100
____________

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ disclosure relates to “apparatuses and computer readable
media for obtaining information about a heating, ventilating, and air
conditioning (HVAC) system.” Abstract. Claim 1 is illustrative:

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1. An apparatus comprising:
a control circuit configured to control a first load of a
heating, ventilation, and air conditioning (HVAC) system;
a sampling circuit configured to apply a test signal to a
first output terminal, wherein the first output terminal
corresponds to the first load; and
a processor configured to:
instruct the control circuit to deactivate the first
load for an operational HVAC mode;
instruct the sampling circuit to apply the test signal
to the first output terminal when the first load is
deactivated;
determine whether the first load is connected to the
first output terminal based on a first resulting signal
caused by the test signal; and
determine a HVAC type of the HVAC system
based on whether the first load is connected to the first
output terminal.

Claims 1–8 and 11–24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Harrod (US 2010/0076605 A1; Mar. 25, 2010) and
Kore (US 7,986,701 B2; July 26, 2011). Final Action 2.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrod, Kore, and Kopel (US 2005/0109764 A1; May 26,
2005). Final Action 6.

ISSUES
Appellants’ arguments present us with the following issues:
A. Did the Examiner err in finding the combination of Harrod and
Kore teaches or suggests determining “whether the first load is
connected” (emphasis added), as recited in independent claim
1? See App. Br. 17–18.
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B. Did the Examiner err in finding the combination of Harrod and
Kore teaches or suggests applying a test signal when the first
load is deactivated, as required by independent claim 1? See
App. Br. 18–20.
C. Did the Examiner err in finding the combination of Harrod and
Kore teaches or suggests instructing “the sampling circuit to
apply the test signal to the first output terminal when a control
relay is an off-state,” as recited in dependent claims 11, 18, and
24? See App. Br. 27–29.
ANALYSIS
We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments Appellants could have
made but chose not to make in the Briefs are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(iv). We adopt the Examiner’s findings and conclusions
(see Final Action 2–6, Ans. 2–6) as our own, and we add the following
primarily for emphasis.

A. Whether the First Load is Connected
Regarding the above Issue A, Appellants argue that the Examiner
erred in finding the cited art teaches or suggests a system to “determine an
HVAC type . . . based on whether the first load is connected,” as recited in
independent claim 1. App. Br. 17. Particularly, Appellants contend Harrod
“can only determine the HVAC type when a response message is received
from control devices . . . [c]onsequently, control circuits 46 and 48 must be
connected . . . to determine the type of HVAC unit . . . .” App. Br. 18.
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We are not persuaded the Examiner erred. The Examiner finds
“Harrod teaches a HVAC system in which a ping is sent out to discover”
what loads are connected to the system. Ans. 2 citing Harrod ¶ 33. Further,
Harrod discloses that, in response to the ping message, “control circuit 46
may transmit a signal to control device 22 indicating that it controls a two-
stage heat pump.” Harrod ¶ 33, see also Final Action 3. Thus, the Examiner
finds Harrod’s “ping message” allows for a determination of HVAC type
based on whether loads are controlled by (i.e., connected to) the system and
able to provide response information. See Ans. 2–3. We agree with the
Examiner that the claim limitation “determine a HVAC type . . . based on
whether the first load is connected” encompasses Harrod’s determination of
HVAC type based on information received from connected loads. Id. That
is, because Harrod’s disclosure of pinging the HVAC system allows the user
to determine the HVAC type based on whether a load is connected to the
system, we are satisfied that such connection status of the load teaches the
disputed limitations.
Further, Appellants’ arguments with respect to Harrod alone
constitute an individual attack against the Harrod reference. The Examiner
rejects claim 1 based on the combination of Harrod with Kore, finding “Kore
teaches using a discovery signal to determine if an HVAC element is
connected.” Final Action 3, citing Kore Fig. 5 (showing a device discovery
procedure). See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references”). Accordingly,
the Examiner's findings with respect to how the proposed combination of
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Harrod and Kore teaches the disputed limitations are unrebutted, and we are
not persuaded the Examiner erred. See Final Action 3–4.

B. When the First Load is Deactivated
Regarding the above Issue B, Appellants argue Harrod teaches away
from discovering deactivated loads, and Kore does not teach or suggest
discovering HVAC loads. App. Br. 19–20. Therefore, Appellants contend
that “Harrod and Kore, either individually or in combination, fail to suggest
the [claim 1] feature of ‘instruct the sampling circuit to apply the test signal
to the first output terminal when the first load [of an HVAC system] is
deactivated.’” App. Br. 18.
We do not find Appellants’ arguments to be persuasive. Regarding
Harrod’s teachings, although we agree with Appellants that Harrod teaches
activated “control circuits” (App. Br. 20), the Examiner finds the claimed
“first load” to be taught by the heat pump of Harrod (See Final Action 2–3,
Ans. 4, Harrod ¶ 33).
1
Thus, the activated status of Harrod’s control circuits
is unrelated to the activated status of the load itself (e.g., the heat pump), and
the Examiner finds that one skilled in the art would deactivate a load (such
as the heat pump) before sending a test signal, to prevent controlling an
unknown load. See Ans. 4–5. Appellants respond that “there are numerous
ways of activating (turning on) a load without knowing what the load
properties are.” Reply Br. 4, See also App. Br. 20. We do not find

1
The Federal Circuit has held “[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, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed.Cir.1994)
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Appellants’ argument persuasive, however, as providing alternative methods
for activation does not rebut the Examiner’s specific finding that one skilled
in the art would deactivate a load in the system of Harrod, “so that the
controller can properly operate the HVAC loads.” Ans. 3.
Further, we agree with the Examiner that Kore teaches the deactivated
load that is suggested by Harrod, because “Kore . . . shows that a controller
can send discovery signals (ping) to loads that allow for a list to be updated
based on new devices that are online and old loads that are off-line (col. 8
lines 15–24).” Ans. 3, see also Kore col. 4, ll. 21–25 and col. 15, ll. 18–36.
The Examiner finds that one skilled in the art would modify the HVAC
system of Harrod with the deactivated-device discovery system of Kore, to
create a system that applies test signals to deactivated loads. See Final Act.
3–4, citing Kore col. 4, ll. 51–56. Appellants have not shown how the
combination of Harrod and Kore do not send test signals to deactivated
HVAC loads as required by claim 1; accordingly we do not find error in the
Examiner’s rejection.

C. When a Control Relay is An Off-State
Regarding the above Issue C, Appellants argue “the combination of
Harrod and Kore fails to suggest the feature of ‘subsequently instruct the
sampling circuit to apply the test signal to the first output terminal when a
control relay is an off-state.’ (Emphasis added)” as required by dependent
claim 11. App. Br. 27. Dependent claims 18 and 24 recite similar
limitations. See App. Br. 28–29. The Examiner responds by finding:
Harrod . . . teaches that most HVAC systems use[] relays to
operate the HVAC system [0003]. That is, relays can be used
to switch a load from active to inactive (off) and that a
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discovery signal is then sent to that load. Therefore, it is clear
to one of ordinary skill in the art that the test signal can be sent
to the first output terminal while a control relay somewhere
within the system is open.
In the absence of sufficient evidence or line of technical reasoning to the
contrary, the Examiner’s response is reasonable and we find no reversible
error with respect to claims 11, 18, and 24.

CONCLUSION
Appellants have not persuaded us that the Examiner erred in rejecting
claims 1, 11, 18, and 24. Regarding the rejections of independent claims 12
and 19, Appellants have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above. App. Br. 20–27.
Appellants further argue that Kopel, cited additionally in the rejection of
dependent claims 9 and 10, does not overcome the deficiencies of Harrod
and Kore, but do not otherwise argue these claims with particularity. App.
Br. 29. Remaining dependent claims 2–8, 13–17, and 20–23 are not
separately argued. Accordingly we sustain the rejection of claims 1–24. See
37 C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s rejection of claims 1–24 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
cjr