Ex Parte Tessier et al

Patent Trial and Appeal Board

Sep 30, 2014

12700643 (P.T.A.B. Sep. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PATRICK C. TESSIER and JEFFREY S. HARTZLER
____________________

Appeal 2012-006616
Application 12/700,643
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patrick C. Tessier and Jeffrey S. Hartzler (“Appellants”) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1–20. Appeal
Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
The Appellants’ invention is directed to a controller for executing
remote utility consumption control. Spec. 1, ll. 12–13. Independent claims
1 and 13 are illustrative and are reproduced below with emphasis on some of
the contested claim limitations.
1. A wall mountable thermostat having a housing
assembly for use in controlling [a] [Heating, Ventilating and
Air Conditioning (“HVAC”)] system of a building or other
structure, the building or other structure having a local gateway
coupled to a communications network, the thermostat
comprising:
a user interface for allowing a user to interact with the
thermostat;
a wireless transceiver in the housing assembly for
wirelessly communicating with the local gateway of the
building or other structure, wherein the local gateway is located
remotely from the thermostat;
a temperature sensor for sensing a temperature inside the
building or other structure and for providing a signal related to
the sensed temperature; and
a thermostat controller coupled to the user interface, the
wireless transceiver and the temperature sensor, the thermostat
controller having a control algorithm for controlling the HVAC
system based, at least in part, on one or more control
parameters, the thermostat controller configured to receive an
electrical signal from the wireless transceiver to allow a user to
control the HVAC system as a function of user inputs received
from a remote location on the communications network via the
local gateway and the wireless transceiver separate from any
utility based control application, to override user inputs
received via the user interface.

13. A zoned HVAC system having two or more zones,
comprising:
a local gateway;
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a first thermostat for controlling a first zone of the zoned
HVAC system, the first thermostat having:
a first wireless transceiver for wirelessly communicating
with the local gateway of the building or other structure;
a first controller coupled to the first wireless transceiver,
the first controller having a first control algorithm for
controlling the HVAC system based, at least in part, on one or
more first control parameters, the first controller configured to
allow a user to change one or more of the first control
parameters from a remote location on the communications
network via the local gateway and the first wireless transceiver;
a second thermostat for controlling a second zone of the
zoned HVAC system, the second thermostat having:
a second wireless transceiver for wirelessly
communicating with the local gateway of the
[sic] building or other structure; and
a second controller coupled to the second wireless
transceiver, the second controller having a second control
algorithm for controlling the HVAC system based, at least in
part, on one or more second control parameters, the second
controller configured to allow a user to change one or more of
the second control parameters from a remote location on the
communications network via the local gateway and the second
wireless transceiver.

THE REJECTIONS
The Examiner has:
(1) rejected claims 1, 5–13, and 17–20 under 35 U.S.C. § 103(a) as
being unpatentable over Solomita (US 2004/0034484 A1,
published Feb. 19, 2004) in view of Petite (US 6,437,692 B1,
issued Aug. 20, 2002);
(2) rejected claims 2–4 and 14–16 under 35 U.S.C. § 103(a) as being
unpatentable over Solomita, Petite, and Schurr (US 6,868,293 B1,
issued Mar. 15, 2005);
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Application 12/700,643

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(3) rejected claims 1, 6–9, 13, 19, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Kolk (US 6,785,630 B2, issued Aug. 31,
2004) in view of Petite;
(4) rejected claims 1–20 under 35 U.S.C. § 103(a) as being
unpatentable over Glorioso (US 5,926,776, issued July 20, 1999)
in view of Petite; and
(5) provisionally rejected claims 1–20 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1–22 of copending U.S. Patent Application No. 11/777,143
in view of Solomita, Petite, Schurr, Glorioso, Liebl, and Ho.
See Answer 4–13.1
ANALYSIS
Claims 1–12, 19, and 20 as Unpatentable under 35 U.S.C. § 103(a)
Independent claim 1 recites, inter alia, “a user to control the HVAC
system . . . separate from any utility based control application.” Appeal Br.
37, Claims App. (emphasis added). Independent claim 19 similarly recites,
inter alia, “sending a first request . . . separate from any utility based control
application.” Id. at 41 (emphasis added). Claims 2–12 depend from claim 1
and claim 20 depends from claim 19. Id. at 3739 and 41.
In rejecting the claims under REJECTIONS (1)–(4), summarized
above, the Examiner interprets the claim term “separate from [any] utility

1 The Examiner also relied on the teachings of Liebl (US 5,361,982, issued
Nov. 8, 1994), Erikson (US 5,533,668, issued July 9,1996), Ho (US
5,833,134, issued Nov. 10, 1998), Tate (US 4,969,508, issued Nov. 13,
1990), Motoyama (US 6,766,223 B1, issued July 20, 2004), Das (US
7,039,404 B2, issued May 2, 2006), and Chen (GB 2 403 097 A, pub. Dec.
22, 2004) as evidence of well-known features. See Answer 5–7.
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Application 12/700,643

5
based control application” to mean that the claimed system can be applied to
a system different from a utility company’s control, and relies on Petite for
disclosing “remote monitoring and control for . . . environmental or safety
systems.” See Final Act. (mailed May 11, 2011) 3–4 and 7 (citations
omitted); Answer 5, 8, and 10 (emphasis added).
In response, the Appellants argue that “[n]othing in . . . Petite . . .
discloses . . . separate from any utility based control application” as recited
in claim 1 (emphasis added) and that Petite’s relevance “is not understood.”
Appeal Br. 12. The Appellants make a similar argument with respect to the
rejection of independent claim 19. See id. at 18–19.
In the Answer, the Examiner appears to adopt an alternative
construction of this claim limitation in finding that “[i]n addition, a user with
access to remotely adjust the controls on a home heating system . . . is also
considered as the applications to ‘separate from utility control’.” Answer 15
(citing Petite, col. 10, ll. 26–28.)
We give claims their broadest reasonable interpretation consistent
with the drawings as well as the Specification. See In re Prater, 415 F.2d
1393, 1404–05 (CCPA 1969). This interpretation must also be consistent
with the one that those skilled in the art would reach. In re Cortright, 165 F.
3d 1353, 1358 (Fed. Cir. 1999).
The Appellants’ Figure 2 and the Specification provide that “a user
owner of the dwelling 200 sends control signals from the signal source 240
to the gateway 230 . . . which controls the HVAC system 220 . . . [so that]
users can remotely control HVAC equipment . . . via the gateway, either in
addition to or separate from any utility-based control.” Spec. 11, ll. 9–16
(emphasis added) and Fig. 2.
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Based on the Specification and Figure 2, we find that a reasonable
construction of the term, “separate from utility based control application,” as
interpreted by those skilled in the art, means that the claimed user is not the
utility company, but instead, for example, an owner of the dwelling.
As the Examiner initially applied a different construction during
prosecution, he has also failed to establish where in the prior art the claimed
HVAC systems are remotely controlled by a user that is not the utility
company, but rather, the owner of the dwelling.2
Therefore, we do not sustain the rejection of claims 1–12, 19, and 20
under 35 U.S.C. § 103(a).
Claims 13–18 as Unpatentable under 35 U.S.C. § 103(a)
As summarized above, the Examiner rejects:
(i) Claims 13, 17, and 18 as unpatentable over Solomita in view of
Petite;
(ii) Claims 14–16 as unpatentable over Solomita, Petite, and
Schurr;
(iii) Claim 13 as unpatentable over Kolk in view of Petite; and
(iv) Claims 13–18 as unpatentable over Glorioso in view of Petite.

Claims 13, 17, and 18 as Unpatentable over Solomita in view of Petite
In rejecting claim 13, the Examiner determines that “it is well known
in the art that a HVAC with single zone and single thermostat can be
extended to a HVAC system with multiple zones and multiple thermostats.”
Answer 6 (citing Liebl, among other references).

2 See, e.g., Answer 4–12, for Examiner’s findings within the cited prior art
of remote control of an HVAC system.
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In response, the Appellants argue that “Solomita [] and Petite []
cannot be fairly considered to teach first and second thermostats, each
controlling a corresponding zone of a zoned HVAC system, with each
thermostat capable of communicating with the same local gateway.” Appeal
Br. 16. The Appellants further argue that Petite does not appear to disclose
communication via local gateway, maintaining that, “[m]erely mentioning
that a transceiver may be interfaced with a list of sensors and/or actuator
types used within building control systems (e.g., smoke detector, thermostat,
and security system) cannot be seen to disclose that a local gateway
communicates with multiple thermostats.” Reply Br. 7; see also id. at 6–7.
In maintaining this rejection, the Examiner does not rely on Solomita
or Petite for disclosing multi-zone HVAC systems. Instead, the Examiner
finds that “multi-zones associate[d] with multi-thermostats is well known in
the art.” Answer 19. The Examiner also cites multiple prior art references
as evidence to support his finding. See id. at 6; see also id. at 18. The
Examiner then concludes that it would have been obvious for a person
having ordinary skill in the art to extend the single zone/thermostat system
of Solomita and Petite to multiple zones/themostats because “the prior art
demonstrates that the separated controlled zones provide comfort for
different users or purposes in different zones.” See id. at 6.
With respect to the “local gateway” limitation, the Examiner cites to
Figure 2 of Petite and finds that “Petite discloses the same one local gateway
220 communicat[ing] with sensor/actuator/transceiver 222 and
sensor/actuator/transceiver 224. The sensor/actuator can be thermostat . . .
Therefore, one local gateway 220 is able to communicate with multiple
thermostats 222 and 224.” Id. at 18.
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Appeal 2012-006616
Application 12/700,643

9
With respect to claim 17, the Appellants argue that neither Petite nor
Solomita discloses the limitations of this claim, emphasizing the claim terms
“first controller,” “second controller,” “viewed from a remote location,”
“and via the local gateway.” Appeal Br. 16–17 (underlining omitted).
In response, the Examiner maintains that the prior art, including
Figure 2 of Petite, discloses these limitations. Answer 18–19. We agree
with the Examiner’s rejection of claim 17 and note that Petite’s computer
240 includes a screen for remotely viewing, via local gateway 220, multiple
sensors/actuators 222 and 224. See Petite, Fig. 2. Furthermore, the modified
system of Solomita and Petite, as proposed by the Examiner, would have
first and second controllers. Therefore, we sustain the rejection of claim 17.
With respect to claim 18, the Appellants argue that the Examiner’s
explanation for rejecting the claim does not “address the actual language of
the claim” and that “‘Monitors the usage data, environmental data and safety
data’ . . . is not the same as” the limitations recited in claim 18. Appeal Br.
17–18.
In response, the Examiner again explains that Figure 2 of Petite
discloses screen 240 and local gateway 220, with gateway 220
communicating with multiple thermostats 222 and 224 via transceivers.
Answer 20.
The Appellants’ argument is not persuasive, in that a reference does
not have to provide an ipsissimis verbis disclosure of a claimed feature. We
agree with the Examiner’s rejection of claim 18 and note that the Appellants
have not shown how the Examiner’s reliance on the prior art, including
Figure 2 of Petite, in meeting this claim limitation is in error. Therefore, we
sustain the rejection of claim 18.
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Application 12/700,643

11
Although we appreciate the Examiner’s position that certain claim
language is not disclosed in the Specification, this is not relevant to the
rejection at hand. What is relevant, however, is that the Examiner has not
adequately explained how the relied-upon Figure 2 of Schurr discloses the
claimed housing carrying a controller and removably coupled to a base, as
recited in the claims.
Therefore, we do not sustain the rejection of claims 14–16 under
35 U.S.C. § 103(a) as unpatentable over Solomita, Petite, and Schurr.
Claim 13 as Unpatentable over Kolk in view of Petite
under 35 U.S.C. § 103(a)
In combining Kolk with Petite, the Examiner determines that:
[I]t would have been obvious . . . to modify the apparatus of
Kolk [] with a wireless gateway communication, remote
environmental or safety monitor and remote temperature
control in view of Petite [] so as to have an alternative suitable
communication and remote HVAC control as additional
function from remote location beside for the utility.
Answer 8.
In the Reply Brief, the Appellants argue that “[t]he Examiner has not
provided any objective reason to modify Kolk [] in the manner recited in
claim 13, other than relying on the instant specification, which is clear
error.” Reply Br. 13.
We find that the Examiner’s stated reasoning, “so as to have an
alternative suitable communication and remote HVAC control as additional
function from remote location beside for the utility,” is based on the use of
impermissible hindsight reconstruction in view of the Appellants’ disclosure.
See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
At the outset, we note that for the reasons set forth supra, the Examiner does
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Application 12/700,643

12
not establish that the remote user in Petite is not the utility company.
Furthermore, we note that Kolk’s system is already remotely controlled. See
Kolk, Fig. 1. We thus find the Examiner’s rejection insufficient to explain
what in the prior art would have prompted a person having ordinary skill in
the art to include Petite’s remote system into Kolk’s remote temperature
regulating system. The Examiner has not provided any findings that either
Kolk or Petite recognized a problem with the remote technique used in Kolk.
As such, absent hindsight, we fail to see why one having ordinary skill in the
art would have been led by the teachings of Petite to modify the temperature
remote system of Kolk in the manner claimed.
Therefore, we do not sustain the rejection of claim 13 under 35 U.S.C.
§ 103(a) as unpatentable over Kolk in view of Petite.
Claims 13–18 as Unpatentable over Glorioso in view of Petite
Under 35 U.S.C. § 103(a)
In combining Glorioso with Petite, the Examiner determines that:
[I]t would have been obvious to . . . modify the apparatus of
Glorioso [] with a gateway communication, environmental or
safety systems in view of Petite [] so as to control the data
exchange with intermediate controlled gateway device
responding to demand/response commands sent from energy
provider.
Answer 10.
The Appellants argue that “[t]he Examiner has not provided any
objective reason to modify Glorioso [] in the manner recited in claim 13,
other than relying on the instant specification, which is clear error.” Reply
Br. 20.
We agree with the Appellants that the Examiner’s stated reasoning,
“so as to control the data exchange with intermediate controlled gateway
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device responding to demand/response commands sent from energy
provider” (Answer 10), lacks the rational underpinning required to support
an obviousness rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). More specifically, the Examiner has failed to explain how
Petite’s remote system would control Glorioso’s smart thermostat.
Therefore, we do not sustain the rejection of claim 13, nor that of claims 14–
18, which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over
Glorioso in view of Petite.
Claims 1–20 as Rejected For Nonstatutory Double Patenting
The Examiner provisionally rejects claims 1–20 on the ground of
nonstatutory obviousness-type double patenting over claims 1–22 of
copending U.S. Patent Application Number 11/777,143 in view of Solomita,
Petite, Ho, Liebl, Schurr, and Glorioso. Answer 13.
In response, the Appellants represent that they “will consider filing a
terminal disclaimer if/when the claims are otherwise indicated as being in
condition for allowance.” Appeal Br. 36 (emphasis added).
As the Appellants do not argue that the rejection is in error or even
represent that they will file terminal disclaimer, we summarily affirm the
provisional rejection of claims 1–20 on the ground of obviousness-type
double patenting as an obvious variation of claims 1–22 of copending U.S.
Patent Application No. 11/777,143 in view of Solomita, Petite, Ho, Liebl,
Schurr, and Glorioso.

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SUMMARY
The Examiner’s decision to reject claims 1, 5–12, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Solomita in view of Petite is
reversed.
The Examiner’s decision to reject claims 13, 17, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Solomita and Petite is
affirmed.
The Examiner’s decision to reject claims 2–4 and 14–16 under
35 U.S.C. § 103(a) as being unpatentable over Solomita, Petite, and Schurr
is reversed.
The Examiner’s decision to reject claims 1, 6–9, 13, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Kolk in view of Petite is
reversed.
The Examiner’s decision to reject claims 1–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Glorioso in view of Petite is reversed.
The Examiner’s decision to provisionally reject claims 1–20 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1–22 of copending U.S. Patent Application No.
11/777,143 in view of Solomita, Petite, Schurr, Glorioso, Liebl, and Ho is
summarily affirmed.
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

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