Silver Spring Networks, Inc.

Patent Trials and Appeals Board

Jun 1, 2020

2019002278 (P.T.A.B. Jun. 1, 2020)

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.
14/516,293 10/16/2014 Peter Hunt SILS0063US SSN-226-US 4668
103346 7590 06/01/2020
Artegis Law Group, LLP/Itron Inc.
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
RAO, SHEELA S
ART UNIT PAPER NUMBER
2119
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
jmatthews@artegislaw.com
kcruz@artegislaw.com
sjohnson@artegislaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER HUNT, JANA VAN GREUNEN, and
WILL E. SAN FILIPPO III
____________

Appeal 2019-002278
Application 14/516,293
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER,
and LINZY T. McCARTNEY, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is Itron Networked Solutions, Inc. See Appeal Br. 3.

Appeal 2019-002278
Application 14/516,293

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “a system where
transmission of available data is controlled in an effort to control the thermal
properties of the system.” (Spec. ¶ 12).

Independent Claim 1
1. A method for controlling thermal properties of a node,
comprising:

calculating, using a temperature reading, a transmission duty cycle of
the node, wherein the transmission duty cycle is a measure of
transmission time relative to idle time of the node;

calculating a data amount capable of being transmitted with the
transmission duty cycle; and

transmitting, from a network interface of the node, a plurality of
available data at a rate less than the data amount based on a priority
of the plurality of available data.

Appeal Br. 16, Claims Appendix, dispositive disputed limitation
emphasized.

2 We herein refer to the Final Office Action, mailed Aug. 24, 2017 (“Final
Act.”); Appeal Brief, filed Mar. 27, 2018 (“Appeal Br.”); the Examiner’s
Answer, mailed Nov. 9, 2018 (“Ans.”), and the Reply Brief, filed Jan. 9,
2019 (“Reply Br.”).
Appeal 2019-002278
Application 14/516,293

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References
The prior art relied upon by the Examiner as evidence:
Name Reference Date
Hashimoto et al. US 2002/0091475 A1 July 11, 2002
Korneluk et al. US 6,718,164 B1 Apr. 6, 2004
Brey et al. US 2013/0073096 A1 Mar. 21, 2013

Rejection
Claims
Rejected
35 U.S.C. § Reference(s)/Basis
1–20 103 Korneluk et al. (“Korneluk”),
Brey et al. (“Brey”),
Hashimoto et al. (“Hashimoto”)

Issue on Appeal
Did the Examiner err in rejecting claims 1–20 under 35 U.S.C. § 103,
as being obvious over the combined teachings and suggestions of the cited
references?

ANALYSIS
Rejection of Claims 1–20 under 35 U.S.C. § 103
Issues: Under 35 U.S.C. § 103, we focus our analysis on the
following argued limitation that we find to be dispositive regarding the
rejection of claims 1–20:
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Application 14/516,293

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Did the Examiner err by finding that Korneluk, Brey, and Hashimoto
collectively teach or suggest the disputed, dispositive limitation:
“transmitting, from a network interface of the node, a plurality of available
data at a rate less than the data amount based on a priority of the plurality
of available data,” within the meaning of independent claim 1?3 (emphasis
added).
Appellant traverses the Examiner’s reliance (Final Action 4) on
Hashimoto’s description at paragraph 24, as found to teach or suggest:
“transmitting . . . available data at a rate less than the data amount based on
a priority of the plurality of available data.” Claim 1 (emphasis added).
In particular, Appellant contends that Hashimoto does not disclose that “data
of a given priority is transmitted at a rate that is lower than the transmission
rate available for transmitting that data.” Appeal Br. 13–14; see also Reply
Br. 4.
The Examiner disagrees (Ans. 8), and points to Korneluk (col. 3, ll.
51–54) as teaching “transmitting . . . available data at a rate less than the
data amount.” The Examiner explains that because Korneluk’s flow control
block controls “when the communication device will start and stop the
transmission of information,” the amount of data being transmitted from
Korneluk’s network interface node is less than the amount of data that is
capable of being transmitted. Ans. 9.
However, turning to the evidence, Hashimoto (¶ 24), we find no
express teaching of “transmitting . . . available data at a rate less than the

3 We give the contested claim limitation the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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data amount based on a priority of the plurality of available data.”
(emphasis added). Although Hashimoto describes assigning a high priority
to data which requires “immediate responsiveness” and sending data “in
order of priority” (¶ 25), we find some degree of speculation is required to
ascertain whether Hashimoto’s data is sent “at a rate less than the data
amount based on a priority of the plurality of available data.” Claim 1
(emphasis added).
“A rejection . . . 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.
Therefore, we decline to engage in speculation.
In reviewing Korneluk (col. 3, ll. 51–54), we also find no express
teaching of “transmitting . . . available data at a rate less than the data
amount based on a priority of the plurality of available data.” Claim 1
(emphasis added). Although Korneluk’s starting and stopping the flow of
transmission teaches that data transmission is performed at a rate less than
the system’s capability, we find no teaching or suggestion that the starting
and stopping of the flow of transmission is “based on a priority of the
plurality of available data,” as recited in claim 1. On this point, we find the
Examiner has not fully developed the record to show how Korneluk’s
starting and stopping of the flow of data transmission are “based on a
priority of the plurality of available data,” as required by the language of
claim 1.
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Accordingly, based upon our review of the record, we find a
preponderance of the evidence supports Appellant’s contention that
Korneluk and Hashimoto collectively fail to teach or suggest the disputed,
dispositive limitation: “transmitting, from a network interface of the node, a
plurality of available data at a rate less than the data amount based on a
priority of the plurality of available data.” Claim 1 (emphasis added).
Moreover, the Examiner has not established that the secondary Brey
reference provides the aforementioned teachings we find are missing from
Korneluk and Hashimoto.
Therefore, we are constrained on this record to reverse the Examiner’s
obviousness rejection of independent claim 1 over the cited combination of
Korneluk, Brey, and Hashimoto. Because remaining independent claims 11
and 19 recite the disputed limitation using similar language of
commensurate scope, we also reverse the Examiner’s rejection of
independent claims 11 and 19.
Because we have reversed the rejection of each independent claim on
appeal, we also reverse the Examiner’s obviousness rejection of each
associated dependent claim.
Accordingly, we reverse the Examiner’s obviousness rejection of all
claims 1–20 on appeal.

CONCLUSION
The Examiner erred in rejecting claims 1–20, as being obvious under
35 U.S.C. § 103, over the cited combination of Korneluk, Brey, and
Hashimoto.

Appeal 2019-002278
Application 14/516,293

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103 Korneluk, Brey,
Hashimoto
1–20

REVERSED