ICONTROL NETWORKS, INC.

Patent Trials and Appeals Board

Dec 8, 2021

2020005383 (P.T.A.B. Dec. 8, 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.
15/670,999 08/07/2017 Alan Wade Cohn 102005.024267 1463
71581 7590 12/08/2021
BakerHostetler / Comcast
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
12/08/2021 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 2020-005383
Application 15/670,999
Technology Center 2600
Before ELENI MANTIS MERCADER, JENNIFER L. McKEOWN, and
JASON J. CHUNG, Administrative Patent Judges.
MCKEOWN, Administrative Patent Judge.

Appeal 2020-005383
Application 15/670,999
2
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 1–172 and 19–23. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, by a computing system and from a controller of
a security, monitoring, and automation (SMA) system
comprising a plurality of sensors, sensor configuration
information associated with one or more of the plurality of
sensors, wherein the SMA system and the controller are located
at a premises, and wherein the computing system is located
external to the premises;
determining, based on the sensor configuration
information, a remote monitoring system from a plurality of
remote monitoring systems, wherein the plurality of remote
monitoring systems are located remote from the computing
system and external to the premises;
generating, based on the sensor configuration information,
formatted sensor configuration information, wherein the

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as iControl
Networks, Inc. Appeal Br. 1.
2 While both the Examiner and Appellant identify claims 1–23 as appealed,
neither the Final Action (dated Apr. 25, 2019) nor the Non-final Action
(dated Oct. 12, 2018) set forth a rejection of claim 18. As such, there is no
rejection of claim 18 before us on Appeal.
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formatted sensor configuration information is in a format
compatible with the determined remote monitoring system of the
plurality of remote monitoring systems; and
sending the formatted sensor configuration information.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Siegler US 2011/0169637 Al

Jul. 14, 2011
Severson US 4,951,029 Aug. 21, 1990

REJECTIONS
The Examiner rejected claims 1, 11, 17, and 21–23 under 35 U.S.C.
102 as anticipated by Siegler. Final Act. 3–5.
The Examiner rejected claims 2–3, 5–10, 12–16, and 19–20 under 35
U.S.C. 103 as unpatentable over Siegler and Severson. Final Act. 5–11.
The Examiner rejected claim 4 under 35 U.S.C. 103 as unpatentable
over Siegler. Final Act. 11.
OPINION
THE ANTICIPATION REJECTION BASED ON SIEGLER
Claims 1, 11, 17, and 21–23
Appellant argues that Siegler fails to disclose the claimed determining
a remote monitoring system from a plurality of remote monitoring systems
and determining the remote monitoring system based on sensor
configuration information. Appeal Br. 5–7. Appellant, in particular, points
out that the Final Action identifies Siegler’s remote monitoring device 104
as both the recited computing system located external to the premises and a
remote monitoring device. Appeal Br. 5.
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Application 15/670,999
4
The Examiner finds that Siegler discloses each limitation of
independent claims 1, 11, and 17. In the Final Action, the Examiner
identifies Siegler’s remote monitoring device as the claimed computing
system without identifying any corresponding components of Siegler as the
plurality of remote monitoring systems. See Final Act. 3. In the Answer,
the Examiner interprets Siegler’s control system 106 as the claimed
computing system and remote monitoring device 104 as the claimed remote
monitoring system. Ans. 3.
The Examiner finds that Siegler describes sending sensor
notifications, including information such as detection type and location,
comparing the sensor information to one or more detection conditions, and
generating one or more alarm notifications based on the detection condition.
Ans. 3–4. According to the Examiner, “It is therefore the examiner's
position that the alert and alarm notification is generated based on the
configuration information received from the sensors and is use by the
monitoring company or the police to determine the monitoring system
transmitting the alarm.”
“[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . .” In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
“[A]bsence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).
While the cited portion of Siegler may suggest determining a remote
monitoring system based on the detection condition (i.e. determining a
remote monitoring system based on sensor configuration information), the
Examiner notably does not support sufficiently, under an anticipation
Appeal 2020-005383
Application 15/670,999
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standard, that Siegler discloses both the claimed computing system external
to the premises and the plurality of remote monitoring systems. In
particular, the cited portion of Siegler describes that sensors 102 and
computing system 106 (including controller 120) are at different locations
within the same building, such as a home. Siegler ¶ 20. As such, Siegler’s
computing system 106 is not a computing system external to the premises.
The Examiner, similarly, does not support sufficiently any interpretation of
Siegler’s remote monitoring device 104 as the claimed computing system.
Based on the record before us, it is not clear, under an anticipation standard,
how Siegler discloses every element of the claim. As such, we are
constrained by the record to determine that the Examiner erred in
determining that Siegler anticipates the claimed invention.3
According, we reverse the rejection of claims 1, 11, 17, and 21–23 as
anticipated by Siegler.

THE REMAINING OBVIOUSNESS REJECTIONS
Claims 2–10, 12–16, and 19–20
As discussed above, we are persuaded that the Examiner erred in
determining that Siegler anticipates independent claims 1, 11, and 17. For
the same reasons, we reverse the rejection of dependent claims 2–10, 12–16,
and 19–20 as unpatentable over the cited combinations of prior art.

3 In the event of further prosecution, we leave it to the Examiner to consider
if there is any ground for an obviousness rejection based on Siegler and
additional prior art. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP) §
1213.02.

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CONCLUSION
The Examiner’s rejections of claims 1–17 and 19–23 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 11, 17,
21–23
102 Siegler 1, 11, 17,
21–23
2–3, 5–10,
12–16, 19–
20
103 Siegler, Severson 2–3, 5–10,
12–16, 19–
20
4 103 Siegler 4
Overall
Outcome
1–17,19–23

REVERSED