iControl Networks, Inc.

Patent Trials and Appeals Board

Nov 29, 2021

2020006284 (P.T.A.B. Nov. 29, 2021)

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.
14/159,739 01/21/2014 Alan Wade COHN 102005.024096 8872
71581 7590 11/29/2021
BakerHostetler / Comcast
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
TRUONG, LOAN
ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
11/29/2021 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN WADE COHN, GARY ROBERT FAULKNER,
JAMES EDWARD KITCHEN, DAVID LEON PROFT, and
COREY WAYNE QUAIN

Appeal 2020-006284
Application 14/159,739
Technology Center 2100
Before MARC S. HOFF, ELENI MANTIS MERCADER, and
JOHNNY A. KUMAR, Administrative Patent Judges.
MANTIS MERCADER, 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 to reject claims 21, 30–40, and 42–49. See Final Act.
1. 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 (2018). Appellant identifies the real party in interest as Comcast
Cable Communications, LLC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed invention is directed to remotely providing zone fault
event notification to one or more of a user of a home security, monitoring
and automation device and a security central station in the event of a loss of
communication with the home security, monitoring and automation device.
Spec. para. 2. Claim 21, reproduced below, is illustrative of the claimed
subject matter:
21. A system comprising:
a premises management system comprising a plurality of
premises devices, wherein the premises management system is
located at a premises; and
a first device in communication, via a network
connection, with the premises management system, wherein the
first device is located external to the premises, and wherein the
first device is configured to:
determine, based on data received from the
premises management system, a state of the premises
management system;
determine a state of the network connection; and
send, to a second device and based on the state of
the premises management system and the state of the
network connection, an indication of the state of the
premises management system.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Elliot US 2006/0067484 Al Mar. 30, 2006
Baek US 2007/0150616 Al June 28, 2007

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REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
21, 30–40, 42–49 101 Eligibility
21, 30–32, 38–40, 42,
45–47
103 Elliot, Baek

OPINION
Claims 21, 30–40, and 42–49 Rejected under 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation omitted); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(brackets in original).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
In accordance with that framework, we first determine what concept the
claim is “directed to.” See id. at 219 (“On their face, the claims before us
are drawn to the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593,
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611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic
concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) published
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
“All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” Id. at 51; see also October 2019 Update:
Subject Matter Eligibility (“October 2019 Update”) at 1.
Under this guidance, we first determine whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
10.2019 (June 2020)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 52–56.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See Guidance,
84 Fed. Reg. at 54. When the judicial exception is so integrated, then the
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
The § 101 Rejection of Claims 21, 30–40, and 42–49
Claim 21 recites in pertinent part “the first device is configured to:
determine, based on data received from the premises management system, a
state of the premises management system; determine a state of the network
connection.” Claims App. claim 21 (emphasis added).
The Examiner finds that the limitation of determining the state of the
premises management system based on the received data and determining a
state of the network connection is a process that, under its broadest
reasonable interpretation, covers performance of the limitation in the mind
but for the recitation of generic computer components. Supplemental Final
Act. 4. According to the Examiner, “determining” in the context of this
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claim encompasses the user looking at received data and stating that it is
armed, disarmed, working, slow or disconnected. Id. The Examiner finds
that if a claim limitation, under its broadest reasonable interpretation, covers
performance of the limitation in the mind but for the recitation of generic
computer component, then it falls within the “Mental Processes” grouping of
abstract ideas. Id.
Appellant argues that the step of “determin[ing] a state of the network
connection,” for example, requires functions by the first device that cannot
be practically applied in the mind. Appeal Br. 5. Appellant proffers the
Specification as non-limiting example stating:
SMA controller 120 communicates with servers residing
in operator domain 160 via networks in access domain 150.
Broadband communication can be provided by coupling SMA
controller 120 with a network router 125, which in turn is
coupled to a wide area network 152, such as a provider network
or the Internet, via an appropriate broadband modem. The
router can be coupled to the wide area network through cable
broadband, DSL, and the like. Wide area network 152, in turn,
is coupled to servers in operator domain 160 via an appropriate
series of routers and firewalls (not shown). SMA controller 120
can include additional mechanisms to provide a communication
with the operator domain. For example, SMA controller 120
can be configured with a cellular network transceiver that
permits communication with a cellular network 154. In turn,
cellular network 154 can provide access via routers and
firewalls to servers in operator domain 160. Embodiments of
SMA controller 120 are not limited to providing gateway
functionality via cellular and dwelling-based routers and
modems. For example, SMA gateway 120 can be configured
with other network protocol controllers such as WiMAX
satellite-based broadband, direct telephone coupling, and the
like.

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Appeal Br. 5–6 (citing Spec. para. 29). Appellant explains that an onlooker
could not practically evaluate, solely in his or her mind, the state of
intervening “series of routers and firewalls” forming a network connection
between the premises management system and the first device in this non-
limiting example. Appeal Br. 6.
Appellant further proffers the Specification, as non-limiting example:
Broadband communication module 165A manages
broadband connections and message traffic from a plurality of
SMA controllers 110 coupled to server 165. Embodiments of
the present invention provide for the broadband channel to be a
primary communication channel between an SMA controller
120 and servers 165. The broadband communication module
handles a variety of communication, including, for example, all
non-alarm and alarm events, broadband heartbeat, and
command of traffic between server 165 and SMA controller
120 over the broadband channel. Embodiments of the present
invention provide for an always-on persistent TCP socket
connection to be maintained between each SMA controller and
server 165. A variety of protocols can be used for
communications between server 165 and SMA controller 120
(e.g., XML over TCP, and the like). Such communication can
be secured using standard transport layer security (TLS)
technologies. Through the use of an always-on socket
connection, servers 165 can provide near real-time
communication between the server and an SMA controller 120.
Appeal Br. 6 (citing para. 38). Appellant argues that an onlooker could not
practically evaluate, solely in his or her mind, a state of a TCP socket
connection (i.e., transport layer network communications) enabling network
communication in this non-limiting example between the premises
management system and the first device. Appeal Br. 6.
We are persuaded by Appellant’s arguments. Based on the record
before us, the Examiner presents insufficient evidence on how an observer
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can determine “based on data received from the premises management
system,” a state of the premises management system and then “determine a
state of the network connection,” as recited in claim 21. The Examiner
ignores the type of data received from the premises management system.
We agree with Appellant the step of “determin[ing] a state of the network
connection,” requires functions by the first device that cannot be practically
applied in the mind. See Appeal Br. 5. We determine that the limitation of
“determine, based on data received from the premises management system, a
state of the premises management system,” cannot be performed by the
human mind. The Examiner does not address the limitation “based on data
received from the premises management system.” See Supplemental Office
Act. The Examiner’s assertion that a user can look at received data and state
that it is armed, disarmed, working, slow or disconnected, and thus, a mental
process, is unreasonable because the Examiner addresses observations after
the received data have been processed by a device and does not address
whether this is an indication of the premises management system, the
network connection, and it certainly does not address the limitation of
“based on data received from the premises management system” as recited
in claim 21. We agree with Appellant that the electronic data transmission
and subsequent determinations cannot be performed in the human mind.
Based on the record before us, we do not agree that the disputed claim
limitations recite a mental process. The Examiner does not provide prima
facie support for the rejection. “[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
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In view of the above, on the record before us, we do not sustain the
rejection of representative claim 21, and for the same reasons the rejection of
claims 30–40 and 42–49.

Claims 21, 30–32, 38–40, 42, and 45–47 Rejected under 35 U.S.C.
§ 103 as Being Unpatentable over Elliot in View of Baek
Appellant argues that the combination of Elliot and Baek does not
teach or suggest “send, to a second device and based on the state of the
premises management system and the state of the network connection,
an indication of the state of the premises management system,” as recited in
independent claim 21. Appeal Br. 10–11. In particular, Appellant argues
that the Examiner’s cited portions of Elliot describe that “security events can
be reported to the alarm central station using the more reliable Voice-over-IP
network, and subsequently, the owner of the security system can be notified
via phone call of the event using pre-recorded messages or pager
notifications, sent over a standard telephone line.” Appeal Br. 11 (citing
para. 17).
According to Appellant, there is no mention that such security event
notifications are sent based on “the state of the premises management system
and the state of the network connection” as recited in claim 21. Appellant
argues that Elliot separately describes that “[s]ervers are in constant
communication with the Broadband Modems installed at a consumer’s home
or business” and “[i]f the servers lose contact with the device, an E-Notify
service can alert the consumer in a matter of minutes.” Id. According to
Appellant, the described alert from the “E-Notify service” in Elliot is
triggered only by the server losing contact with a “Broadband Modem” at a
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premises and is unrelated to any sort of security event. Id. Appellant notes
that the Advisory Action further refers to Elliot’s Abstract, which describes
that an owner can be alerted “that the customer’s connection has been
broken” and “[t]his alert can be used, for example, to issue a telephone call
to the police, informing them of the breach of line integrity and possible
compromise of the premise[s].” Appeal Br. 11–12 (citing Advisory Act. 4).
Appellant argues that Elliot’s Abstract makes no express mention or
reference to “a state of the premises management system” or anything
similar, and the characterization of the “compromise of the premises” as “a
state of the premises management system” is improper. Appeal Br. 12.
According to Appellant, a premises (e.g., a house) is not the same as or in
any way similar to “a premises management system comprising a plurality
of premises devices.” Id. Finally, even if the “compromise of the premises”
could be properly considered as “a state of the premises management
system” (which Appellant does not concede), the Abstract gives no
indication that the “compromise of the premises” is determined “based on
data received from the premises management system,” as recited in claim
21. Id. Appellant argues that, on the contrary, the Abstract indicates that
any such determination would be based on a broken connection. Id.
We agree with Appellant’s argument. We give claims their broadest
reasonable interpretation consistent with the specification. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Appellant’s Specification, in pertinent part, describes the scenario
wherein:
An intruder to the home domain might take advantage of the
unified nature of the SMA controller and disable the SMA
controller prior to expiration of the entry delay (i.e., a so-called
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“smash-and-grab” scenario), in order to prevent sounding of an
alarm. The continuous communication between the SMA
controller and an operator domain server results in the sensor
state change associated with the zone fault event to be provided
to a server 165 in near real time, along with a message
indicating that the SMA controller's entry delay timer has been
initiated. If the server subsequently detects a loss of
communication with the SMA controller before a disarm signal
is received, the notification module can be configured to relay
an alarm signal to, for example, one or more of the end user, the
central station, and a provider administrator. The alarm signal
can be defined using available central station protocols (e.g.,
contact ID) to indicate a “smash and grab” scenario or an
indication that is agreed upon between the central station
provider and the provider of the operator domain services.
Spec. para. 42; Summary of Claimed Subject Matter.
The Examiner finds that Elliot teaches the limitation of “determine,
based on data received from the premises management system, a state of the
premises management system” because Elliot teaches that the security
system will check in with the alarm monitoring center with a diagnostic
signal at a predetermined interval. Final Act. 5 (citing Elliot Abstract, para.
21).
The Examiner further finds that Elliot teaches the limitation of
“determine a state of the network connection” because Elliot teaches a
security measure wherein servers are in constant communication with the
broadband modems installed at a consumer’s home and if the servers lose
contact with the security device there is a notification. Final Act. 5 (citing
para. 21).
However, we determine that the Examiner does not appropriately
address the limitation of “send, to a second device and based on the state of
the premises management system and the state of the network connection, an
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indication of the state of the premises management system.” Final Act. 5
(citing Elliot para. 17). Elliot paragraph 17 teaches that security events can
be reported using a more reliable Voice-over-IP network. See Elliot para.
17.
At best, Elliot teaches sending an E-Notify service to a second device
(i.e., the owner or the alarm monitoring service) based on the lack of a
network connection. Elliot para. 21. There is no teaching in Elliot of “send,
to a second device and based on the state of the premises management
system and the state of the network connection, an indication of the state of
the premises management system” as recited in claim 21.
In the Answer, the Examiner’s assertion that the claimed state of the
premises management system and the state of the network connections have
no further details than face value, essentially ignores the claim elements of
“state premises management system” and the “state of the network
connection” of claim 21 and treats them as one and the same. See Ans. 13.
We are constrained from the record before us to reverse the
Examiner’s rejection of claim 21 and for the same reasons the rejection of
claims 30–32, 38–40, 42, 45–47.
CONCLUSION
The Examiner’s rejections of claims 21, 30–40, and 42–49 are
REVERSED.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 30–40,
42–49
101 Eligibility 21, 30–40,
42–49
21, 30–32,
38–40, 42,
45–47
103(a) Elliot, Baek 21, 30–32,
38–40, 42,
45–47
Overall
Outcome
21, 30–40,
42–49

REVERSED