Johnson Controls Technology Company

Patent Trials and Appeals BoardJun 1, 2021

2020003271 (P.T.A.B. Jun. 1, 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. 15/143,373 04/29/2016 Sudhi Sinha 15BE035-US (081445-0740) 1439 26371 7590 06/01/2021 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER COMINGS, DANIEL C ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 06/01/2021 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUDHI SINHA, JOSEPH R. RIBBICH, MICHAEL L. RIBBICH, CHARLES J. GAIDISH, and JOHN PETER CIPOLLA ____________ Appeal 2020-003271 Application 15/143,373 Technology Center 3700 ____________ Before ANTON W. FETTING, MICHAEL C. ASTORINO, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–26. 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. Appellant identifies Johnson Controls Technology Company as the real party in interest. Appeal Br. 2. Appeal 2020-003271 Application 15/143,373 2 CLAIMED INVENTION Claims 1 and 18 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A thermostat, comprising: a transparent touch screen display, wherein the matter behind the display is visible in the non-active display portions to allow a user to view a wall the thermostat is mounted on through the transparent touch screen display; and a control bar connected to one side of the transparent touch screen display, wherein the control bar comprises: a housing; processing circuitry operably connected to the transparent touch screen display and configured to monitor and control building equipment; and a temperature sensor operably connected to the processing circuitry. Appeal Br. 28 (Claims Appendix). REJECTIONS Claims 1–12 and 18–25 are rejected under 35 U.S.C. § 103 as unpatentable over Novotny (US 2014/0319233 A1, pub. Oct. 30, 2014), and Wu (US 2012/0001873 A1, pub. Jan. 5, 2012). Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over Novotny, Wu, and Summers (US 2009/0211171 A1, pub. Aug. 27, 2009). Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over Novotny, Wu, and Mayfield (US 2012/0126700 A1, pub. May 24, 2012). Appeal 2020-003271 Application 15/143,373 3 Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over Novotny, Wu, and Goodman (US 9,696,055 B1, iss. July 4, 2017).2 Claims 16, 17, and 26 are rejected under 35 U.S.C. § 103 as unpatentable over Novotny, Wu, and Grondal (US 5,428,912, iss. July 4, 1995).3 ANALYSIS Independent Claims 1 and 18, and Dependent Claims 2–12 and 19–25 In rejecting independent claim 1 under 35 U.S.C. § 103, the Examiner relies primarily on Novotny for disclosing the claim limitations. Final Act. 3 (citing Novotny ¶¶ 52, 78, 118, 181, Fig. 1). Novotny is titled “BATTERY COMPARTMENT FOR AN HVAC CONTROLLER.” Novotny discloses thermostat 10 having first sub-assembly 14 (e.g., a thermostat body) and second sub-assembly 16 (e.g., a wall plate), such that second sub- assembly 16 mounts on a wall, and first sub-assembly 14 connects with second sub-assembly 16. Novotny ¶ 50. In particular, extensions 26 of first sub-assembly 14 engage openings 28 of second sub-assembly 16. Id. ¶ 51, Fig. 9. First sub-assembly 14 includes housing 13 with cover 13a and back 13b, which houses touch screen display 24, battery compartment 70, and first printed circuit board (PCB) or printed wiring board (PWB) 19. 2 We treat dependent claim 15 as rejected over Novotny, Wu, and Goodman, instead of Novotny and Goodman, in light of claim 15’s dependence from claim 10. Final Act. 10–11. 3 We treat the Examiner’s omission of claim 26 from the rejection heading as inadvertent error (Final Act. 11), in light of the Examiner’s rejection of this claim at page 12 of the Final Office Action. Appeal 2020-003271 Application 15/143,373 4 Id. ¶ 57, Figs. 8–10; see also id. ¶¶ 6, 71. Second sub-assembly 16 includes wall plate 18 and second PCB or PWB 20. Id. ¶ 62, Fig. 10. First PCB or PWB 19 structurally complement one another. Id. ¶ 64. For example, electronic components 22 extend from a first PCB or PWB to a second PCB or PWB by varying distances. Id. ¶¶ 64–65. Back 13b of housing 13 includes apertures for accommodating inter-board connectors 30A–30B for electrically connecting the first and second PCBs or PWBs. Id. ¶ 66. The first PCB or PWB and second PCB or PWB have a non-overlapping region that includes first portion 27a for carrying one or more batteries within battery contacts 71 and second portion 27b for carrying a memory card connector. Id. ¶ 70. A sensor internal to thermostat 10 may measure the indoor temperature. Id. ¶¶ 181–82. The Examiner acknowledges that Novotny does not teach the claimed “transparent touch screen” and the claimed “control bar connected to one side of the transparent touch screen display” having, in part, processing circuitry connected to the transparent touch screen display and configured to monitor and control building equipment, as recited in claim 1. Final Act. 13; Ans. 15. However, the Examiner finds that Wu teaches transparent display screen 30 and a touch screen 10 connected by a fixing member, and a sensing device that includes control circuitry for the display disposed to one side of the display. Final Act. 5 (citing Wu ¶ 11, Fig. 2). Wu is titled “TRANSPARENT TOUCH SURFACE KEYBOARD” and relates to a transparent touch surface keyboard for use with an electronic device. Wu ¶ 2. “Touch surface keyboards have the advantage of providing thinner, lighter input devices.” Id. ¶ 4. Wu’s transparent touch surface keyboard 100 includes touch screen 10; transparent display screen 30; fixing Appeal 2020-003271 Application 15/143,373 5 member 50, which receives a side edge of touch screen 10; support member 70, which is located below fixing member 50 and has a built-in control circuit; and sensing device 90. Id. ¶ 11, Fig. 1. Touch screen 10, transparent display screen 30, and sensing device 90 are electronically connected to the control circuit of support member 70. Id. The control circuit has a central processing unit (CPU) 20. Id. ¶ 17, Fig. 3. Sensing device 90 includes transmitter module 92 for transmitting infrared (IR) light and receiver module 92 for receiving IR light reflected from a user’s hand, indicating that transparent touch surface keyboard 100 should switch from a standby state to a working state. Id. ¶¶ 17–21, 30. By sensing whether the user’s hands are above or on the touch screen through sensing device 90, and switching between a working state and standby state accordingly, Wu’s transparent touch surface keyboard 100 consumes less electrical energy. Id. ¶ 30. The Examiner reasons that it would have been obvious to modify Novotny’s thermostat by moving the electronics behind the touch screen to a housing along an edge of the touch screen display, and by changing the touch screen display to a transparent display. See Final Act. 15; see also Ans. 15–16. According to the Examiner, this modification would have been obvious to one of ordinary skill in the art “to provide a display that is thin and light . . . and offers reduced energy consumption when not in use.” Final Act. 4. Yet, given the structural and functional differences between Wu’s transparent keyboard 100 and Novotny’s thermostat 10, it is not clear that the proposed modifications would make Novotny’s thermostat lighter or reduce its energy consumption. Nor is it readily apparent how or why one of ordinary skill in the art would move Novotny’s sensor and processing Appeal 2020-003271 Application 15/143,373 6 circuitry for monitoring and controlling building equipment from behind the display and touch screen to a “control bar” connected to one side of a transparent display based on Wu’s disclosure of a transparent touch surface keyboard having support member 70. For example, Novotny describes arranging the first PCB/PWB and the second PCB/PWB in stacked layers behind the display to structurally complement one another. See Novotny ¶ 63, Fig. 10. The components of each board are arranged to align in certain instances, to provide a region for carrying batteries and a connector, and to avoid damage caused by electrostatic discharge (“ESD”) for sensitive components. See id. ¶¶ 64, 70, 78. The first PCB/PWB contains electronic components particularly sensitive to ESDs because the display and touch screen positioned in front of the first PCB/PWB (together with other surrounding structures) protect them from ESDs. Id. ¶ 78. The second PCB/PWB contains electronic components that are less sensitive to ESDs. Id. Wu, in contrast, relates to a transparent touch surface keyboard, not a thermostat for monitoring and controlling building equipment. As such, Wu’s support member 70 fails to teach or suggest processing circuitry configured to monitor and control building equipment, and a temperature sensor, as required by the claimed “control bar” of claim 1. Instead, Wu’s support member 70 houses a control circuit for the keyboard that comprises central processing unit 20. See Wu ¶ 17, Fig. 3. Because the Examiner does not adequately explain why or how one of ordinary skill in the art would modify Novotny’s thermostat to arrive at the claimed thermostat in view of Wu’s disclosure of a transparent touch surface keyboard, we agree with Appellant that the Examiner’s rationale appears to Appeal 2020-003271 Application 15/143,373 7 be based on impermissible hindsight. See Reply Br. 5. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1 and dependent claims 2–12 under 35 U.S.C. § 103 as unpatentable over Novotny and Wu. Claim 18 recites language similar to claim 1, and the Examiner rejects claim 18 by applying the same erroneous rationale used to reject claim 1. See Final Act. 8 (“Regarding the limitations of claim 18, refer to the above rejection of claim 1.”). Therefore, we do not sustain the rejection of claim 18 and dependent claims 19–25 for the same reasons described above with respect to claim 1. Dependent Claims 13–17 and 26 The Examiner’s rejections of claims 13–17 do not cure the deficiency in the rejection of independent claim 1. Therefore, we do not sustain the Examiner’s rejections of claims 13–17 under 35 U.S.C. § 103. The Examiner’s rejection of claim 26 does not cure the deficiency in the rejection of independent claim 18. Therefore, we do not sustain the Examiner’s rejection of claim 26 under 35 U.S.C. § 103. Appeal 2020-003271 Application 15/143,373 8 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–12, 18– 25 103 Novotny, Wu 1–12, 18– 25 13 103 Novotny, Wu, Summers 13 14 103 Novotny, Wu, Mayfield 14 15 103 Novotny, Wu, Goodman 15 16, 17, 26 103 Novotny, Wu, Grondal 16, 17, 26 Overall Outcome 1–26 REVERSED