Johnson Controls Technology Company

Patent Trials and Appeals Board

Mar 31, 2022

2022000742 (P.T.A.B. Mar. 31, 2022)

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. 16/546,076 08/20/2019 Jennifer S. Cayemberg 16BE037-US2 (112444-1219) 6937 146598 7590 03/31/2022 Foley & Lardner LLP 3000 K Street N.W. Suite 600 Washington, DC 20007-5109 EXAMINER WONG, TITUS ART UNIT PAPER NUMBER 2181 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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 uspatents@jci.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JENNIFER S. CAYEMBERG, LISA E. STRAND, RYAN J. BYKOWSKI, DANIEL R. GOTTSCHALK, and ERIC W. HAMBER Appeal 2022-000742 Application 16/546,076 Technology Center 2100 Before JAMES R. HUGHES, JOHNNY A. KUMAR, and JOHN A. EVANS, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1-20 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Johnson Controls Technology Company. Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed Aug. 20, 2019 (claiming benefit of 15/179,894, filed June 10, 2016); Appeal Brief (“Appeal Br.”), filed June 2, 2021; and Reply Brief (“Reply Br.”), filed Nov. 16, 2021. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Sept. 11, 2020; and Answer (“Ans.”) mailed Sept. 17, 2021. Appeal 2022-000742 Application 16/546,076 2 conducted on March 9, 2022. We will add a transcript of the Oral Hearing to the record in due course. We Affirm In Part. CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, “relates generally to building management systems.” Spec. ¶ 2. More specifically, Appellant’s claimed subject matter is directed to methods for interacting with equipment in a building management system, and building management systems that include a communications bus with devices coupled to and communicating via a communications bus using a master-slave token passing protocol. One of these devices has stored thereon an active node table that includes multiple nodes, each representing one of the devices participating in a token passing ring (using the token passing protocol). The device (including the active node table) monitors the active node table and identifies a new device (new node) communicating on the communications bus. See Spec. ¶¶ 3-22; Abstr. Claims 1 and 15 (directed to a system) and claim 9 (directed to a method) are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A building management system comprising: a communications bus; and a plurality of devices coupled to the communications bus and configured to communicate on the communications bus using a master-slave token passing protocol, a first device of the plurality of devices having an active node table stored therein, the active node table comprising a plurality of nodes, each node representing one of the plurality of devices participating in a token passing ring used to exchange information among the Appeal 2022-000742 Application 16/546,076 3 plurality of devices via the communications bus using the master-slave token passing protocol; wherein the first device is configured to monitor the active node table for new nodes and to identify a new device communicating on the communications bus in response to a determination that the active node table includes a new node. Appeal Br. 34 (Claims App.) (emphases added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hull et al. (“Hull”) US 6,487,457 B1 Nov. 26, 2002 Shike et al. (“Shike”) US 2009/0287736 A1 Nov. 19, 2009 Cayemberg et al. (“’360 Patent”) US 10,402,360 B2 Sept. 3, 2019 (Filed: June 10, 2016) REJECTIONS3 1. The Examiner rejects claims 1-14 under the non-statutory ground of obviousness-type double patenting over claims 1-20 of the ’360 Patent. See Final Act. 2-3.4 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103. Because the present application has an effective filing date after the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103. 4 Appellant does not address the Examiner’s double patenting rejection in the Appeal Brief. Instead, Appellant states that “Applicant respectfully requests that the double patenting rejection of [claims] 1-14 be held in abeyance until an indication of allowable subject matter is provided.” Amendment filed Nov. 11, 2020 at 7. Accordingly, the Examiner’s double patenting rejection is uncontested, and we summarily affirm the rejection. Appeal 2022-000742 Application 16/546,076 4 2. The Examiner rejects claims 1-8 under 35 U.S.C. § 103 as being unpatentable over Hull and Shike. See Final Act. 4-7. 3. The Examiner rejects claims 9-20 under 35 U.S.C. § 102(a)(1) as being anticipated by Hull. See Non-Final Act. 7-9. ANALYSIS Obviousness Rejection The Examiner rejects independent claim 1 (as well as claims 2-8) as being obvious over Hull and Shike. See Final Act. 4-7; Ans. 3-5. The Examiner relies on Hull for teaching most of the features of Appellant’s claim 1, including an active node table and monitoring the active node table to identify a new device communicating on the communications bus. See Final Act. 4-5; Ans. 3-6 (citing Hull, col. 2, l. 65-col. 3, l.31; col. 17, ll. 2- 42; col. 18, ll. 10-22; col. 19, ll. 15-67; Figs. 2-4, 14A-14C). The Examiner relies on Shike for disclosing a master-slave token passing protocol and devices communicating via a token passing ring using the protocol. See Final Act. 5; Ans. 3-5 (citing Shike ¶¶ 8, 31-33, 42, 43, 46, 53; Fig. 2). Appellant contends that Hull and Shike are not properly combinable and do not teach the disputed limitations of claim 1. See Appeal Br. 8-21; Reply Br. 3-12. Specifically, Appellant contends, inter alia, that Hull does not teach or suggest a device identifying a new device communicating on the communications bus: Hull . . . does not listen for new devices nor compare device addresses in the point discovery process. Hull . . . simply compares two arrays of points and determines a mismatch. Therefore, Appellant submits that Hull . . . does not disclose, teach, or suggest “wherein the first device is configured to Appeal 2022-000742 Application 16/546,076 5 monitor the active node table for new nodes and to identify a new device communicating on the communications bus in response to a determination that the active node table includes a new node” as recited in independent Claim 1. Appeal Br. 20; see Appeal Br. 11-21; Reply Br. 9-12. We find Appellant’s arguments persuasive of Examiner error. As pointed out by Appellant (see Reply Br. 11-12), the Examiner-cited portions of Hull do not explicitly disclose monitoring a table of nodes (that communicate via the token passing ring) and identifying a new node from the monitoring. At best Hull describes a point discovery process and comparing arrays of points to provide a new point alarm. See Hull col. 17, ll. 20-42. “A rejection based on section 103 clearly must rest on a factual basis[.]” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Here, the Examiner does not provide a clear mapping of the recited claim features to the corresponding elements in Hull, and resorts to speculation to provide the missing features. Further, “[w]hen a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. §1.104(c)(2) (2019) (emphasis added). Here, the Examiner does not provide a clear explanation of how Hull’s new point Appeal 2022-000742 Application 16/546,076 6 alarm meets the claimed requirement of monitoring a table (active node table) to identify a new node (in the token passing ring). Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Hull and Shike renders obvious Appellant’s claim 1. Claims 2-8 depend from and stand with Appellant’s claim 1. Thus, we do not sustain the Examiner’s obviousness rejection of claims 1-8. Anticipation Rejection The Examiner rejects claims 9-20 as being anticipated by Hull. See Final Act. 7-9; Ans. 5-6. Specifically, the Examiner finds that Hull discloses all the features of claim 9 (as well as independent claim 15, and dependent claims 10-14 and 16-20) because various Examiner-cited portions of Hull disclose attributes including an object type/class and model name/number. See Final Act. 7-8; Ans. 5-6 (citing Hull, col. 2, l. 65-col. 3, l. 31; col. 17, ll. 2-42; col. 19, ll. 15-67; Figs. 2-4, 14A-14C). Appellant contends that Hull does not disclose the disputed limitations of claim 9. See Appeal Br. 21-27; Reply Br. 12-14. Specifically, Appellant contends, inter alia, that Hull’s “ModelName” is not an equipment model as recited in claim 9 because Hull merely discloses a character string, which is significantly different than Appellant’s equipment model described in Appellant’s Specification. See Appeal Br. 21-27; Reply Br. 12-13 (citing Spec. ¶¶ 55, 139-141; Hull, col. 19, ll. 15-43). Appellant further contends that even if one were to equate Hull’s ModelName with the recited equipment model, Hull provides no disclosure of actions based on the equipment model (Hull’s ModelName) when a new device is discovered. Specifically, (1) making a determination that a new device provides its own Appeal 2022-000742 Application 16/546,076 7 equipment model and retrieving the equipment model from the new device in response to that determination, or (2) making a determination that a new device does not provide its own equipment model and generating (automatically) a new equipment model for the new device in response to that determination. See Appeal Br. 24-27; Reply Br. 13-15. To anticipate, a prior art reference must “disclose all elements of the claim within the four corners of the document, and it must disclose those elements arranged as in the claim.” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017) (internal quotation marks omitted). See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); Manual Patent Examining Procedure (“MPEP”) § 2131. We agree with Appellant that the Examiner has not persuasively shown that Hull discloses “retrieving the equipment model from the new device in response to a determination that the new device provides its own equipment model,” and “automatically generating a new equipment model for the new device in response to a determination that the new device does not provide its own equipment model” (claim 9). In particular, the Examiner has not shown that Hull makes any determination related to the model information (ModelName), or how the model information for a new device is processed, such that it is either retrieved from the new device or automatically generated. See, e.g., Ans. 5-6 (citing Hull col. 19, ll. 15-43). Nothing in the Examiner-cited passage describes any determination, retrieval, or generation related to model information. Thus, we are persuaded by Appellant’s arguments that the Examiner-cited portions of Hull do not disclose the disputed features of claim 9. Appeal 2022-000742 Application 16/546,076 8 Consequently, we are constrained by the record before us to find that the Examiner erred in finding Hull anticipates Appellant’s independent claim 9. Independent claim 15 includes limitations of commensurate scope. Dependent claims 10-14 and 16-20 depend from and stand with their respective base claims. Accordingly, Appellant’s contentions persuade us of error in the Examiner’s anticipation rejection of claims 9-20, and we reverse the Examiner’s rejection of these claims. CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 1-14 under the ground of non-statutory obviousness-type double patenting. Appellant has shown that the Examiner erred in rejecting claims 1-8 as being obvious under 35 U.S.C. § 103. Appellant has also shown that the Examiner erred in rejecting claims 9-20 as being anticipated by Hull under 35 U.S.C. § 102(a)(1). We, therefore, sustain the Examiner’s rejection of claims 1-14, but do not sustain the Examiner’s rejection of claims 15-20. Appeal 2022-000742 Application 16/546,076 9 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-14 Nonstatutory Double Patenting U.S. Patent 10,402,360 B2 1-14 1-8 103 Hull, Shike 1-8 9-20 102 Hull 9-20 Overall Outcome 1-14 15-20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2020). AFFIRMED IN PART