Yehuda Binder et al.

Patent Trials and Appeals Board

Mar 2, 2020

13733634 - (D) (P.T.A.B. Mar. 2, 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.
13/733,634 01/03/2013 Yehuda BINDER BINDER-014-US1 3976
131926 7590 03/02/2020
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
KHAN, HASSAN ABDUR-RAHMAN
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
03/02/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YEHUDA BINDER and BENJAMIN MAYTAL
____________

Appeal 2018-007694
Application 13/733,634
Technology Center 2400
____________

Before JOHN A. JEFFERY, JUSTIN BUSCH, and LINZY T.
McCARTNEY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–3, 13, 31, 33–35, 38, 39, 100–102, 104, 107, 108,
117, 118, 120, 140, 142, 159, 168, 193, 198, 201, and 223. Claims 4–12,
14–30, 32, 36, 37, 40–99, 103, 105, 106, 109–116, 119, 121–139, 141, 143–
158, 160–167, 169–192, 194–197, 199, 200, 202–222, and 224–235 were
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a new ground of rejection.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as May Patents
Ltd. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention is a control system used in connection with a
building or vehicle, where the system uses a server implementing gateway or
control functionalities. See Abstract; Spec. 1.2 To this end, the invention
uses sensors that provide information on environmental conditions and
events, and actuators that either (1) effect or generate a physical
phenomenon responsive to an electrical command, which can be an
electrical signal (e.g., voltage or current), or (2) change a device’s
characteristic, such as its resistance or impedance. Spec. 16–18.
Controller functionality can be integrated in a server 151 external to
the building as shown in Figures 15 and 15a, where sensor data is relayed to
the controller via a router inside a building and the Internet. See Spec. 162–
63. As shown in Figure 15a, command data is sent from the server to field
units via the Internet, the router, and associated control networks within the
building. See id. Claim 1 is illustrative:
1. A system for commanding an actuator operation in response to a
sensor response associated with a phenomenon according to a control
logic, for use with one or more in-building or in-vehicle networks for
communication in a building or in a vehicle, and an external network
at least in part external to the building or to the vehicle, the system
comprising:

a router in the building or in the vehicle, coupled between the one or
more in-building or in-vehicle networks and the external network, and
operative to pass digital data between the in-building and external
networks;

2 Throughout this opinion, we refer to the substitute Specification filed April
19, 2013.
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a first device in the building or in the vehicle comprising, or
connectable to, the sensor that responds to the phenomenon, said first
device is operative to transmit a sensor data corresponding to the
phenomenon to said router over the one or more in-building or in-
vehicle networks;

a second device in the building or in the vehicle comprising, or
connectable to, an actuator that affects the phenomenon, the second
device is operative to execute actuator commands received from said
router over said one or more in-building or in-vehicle networks; and

a control server external to the building or to the vehicle storing said
control logic and coupled to said router over the Internet via the
external network,

wherein said control server is operative to receive the sensor data
from said router, to produce actuator commands in response to the
received sensor digital data according to said control logic, and to
transmit the actuator commands to said second device via said router.

RELATED APPEAL
Appellant informs us of a related appeal in copending application
15/657,163. The Board has not yet decided this appeal.

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THE REJECTIONS3
The Examiner rejected claims 2, 13, 31, 38, 39, 101, 102, 104, 107,
108, 117, 118, 120, 140, 142, 159, 168, 193, 198, and 2014 under 35 U.S.C.
§ 112, second paragraph as indefinite. Non-Final Act. 3–11.5
The Examiner rejected claims 1–3, 13, 31, 33–35, 38, 39, 100–102,
104, 107, 108, 117, 118, 120, 140, 142, 159, 168, 193, 198, 201, and 223
under 35 U.S.C. § 101 as ineligible. Non-Final Act. 11–13.
The Examiner rejected claims 1–3, 13, 100, 117, 118, 140, 142, 159,
168, 193, 201, and 223 under 35 U.S.C. § 103 as unpatentable over Beliles
(US 2007/0283005 A1; published Dec. 6, 2007) and Abe (US 2012/0253480
A1; published Oct. 4, 2012). Non-Final Act. 14–21.
The Examiner rejected claims 31 and 33–35 under 35 U.S.C. § 103 as
unpatentable over Beliles, Abe, and Ansari (US 2010/0071053 A1;
published Mar. 18, 2010). Non-Final Act. 21–24.

3 Because the Examiner’s objections (Non-Final Act. 3) are petitionable—
not appealable—matters, they are not before us. See MPEP § 706.01
(“[T]he Board will not hear or decide issues pertaining to objections and
formal matters which are not properly before the Board.”); see also MPEP §
1201 (“The Board will not ordinarily hear a question that should be decided
by the Director on petition . . . .”).
4 Although the Examiner rejects these claims separately as indefinite, we
nonetheless consolidate the separate rejections here for clarity and brevity.
Also, despite erroneously omitting claims 33–35 that depend from claim 31
that was rejected as indefinite, we nonetheless reproduce the claims so
rejected as articulated by the Examiner.
5 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
May 10, 2018 (“Non-Final Act.”); (2) the Appeal Brief filed May 17, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed June 25, 2018 (“Ans.”);
and (4) the Reply Brief filed July 8, 2018 (“Reply Br.”).
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The Examiner rejected claims 38 and 39 under 35 U.S.C. § 103 as
unpatentable over Beliles, Abe, and Noonan (US 2003/0105389 A1;
published June 5, 2003). Non-Final Act. 24–26.
The Examiner rejected claims 101 and 102 under 35 U.S.C. § 103 as
unpatentable over Beliles, Abe, and Wechs (US 2013/0139440 A1;
published June 6, 2013). Non-Final Act. 26–28.
The Examiner rejected claims 104 and 107 under 35 U.S.C. § 103 as
unpatentable over Beliles, Abe, and Gelvin (US 2015/0046582 A1;
published Feb. 12, 2015). Non-Final Act. 28–30.
The Examiner rejected claim 108 under 35 U.S.C. § 103 as
unpatentable over Beliles, Abe, Gelvin, and Rofougaran (US 2013/0308581
A1; published Nov. 21, 2013). Non-Final Act. 30–32.
The Examiner rejected claim 120 under 35 U.S.C. § 103 as
unpatentable over Beliles, Abe, Noonan, and Ansari. Non-Final Act. 32–33.
The Examiner rejected claim 198 under 35 U.S.C. § 103 as
unpatentable over Beliles, Abe, Ansari, and Balgard (US 2009/0224906 A1;
published Sept. 10, 2009). Non-Final Act. 33–35.

THE INELIGIBILITY REJECTION
The Examiner determines that the claimed invention is directed to an
abstract idea, namely (1) collecting information via sensors; (2) analyzing
the information; and (3) producing/transmitting actuator commands as a
response. See Non-Final Act. 12; Ans. 11. The Examiner adds that the
claims do not include elements that add significantly more than the abstract
idea, but merely recite elements that are well-understood, routine, and
conventional. See Non-Final Act. 12; Ans. 12–13.
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Appellant argues that not only did the Examiner fail to identify the
purported abstract idea clearly, the claimed invention is eligible because,
among other things, it is tied to a particular machine, and improves the
communication field by implementing a control loop using communication
based on multiple devices over multiple networks to detect when
abnormalities occur. Appeal Br. 29–31; Reply Br. 14–19.
Appellant adds that not only did the Examiner fail to show that the
recited elements are well-understood, routine, and conventional, but they
add significantly more to the abstract idea by, for example, carrying power
and data over the same cable as recited in claims 104, 107, and 108. Appeal
Br. 30–32; Reply Br. 16.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 35 and 36 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
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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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. 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, 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, 67 (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 187 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 67 (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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). That
said, 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
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 (quotation marks 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.
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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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.
08.2017, Jan. 2018)).
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, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Claims 1–3, 13, 31, 33–35, 38, 39, 100–102, 104, 107, 108, 117, 118, 120,
140, 142, 159, 168, 193, 198, 201, and 223: Alice/Mayo Step One

Representative independent claim 1 recites:

1. A system for commanding an actuator operation in response to a sensor
response associated with a phenomenon according to a control logic, for use
with one or more in-building or in-vehicle networks for communication in a
building or in a vehicle, and an external network at least in part external to
the building or to the vehicle, the system comprising:

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a router in the building or in the vehicle, coupled between the one or
more in-building or in-vehicle networks and the external network, and
operative to pass digital data between the in-building and external networks;

a first device in the building or in the vehicle comprising, or
connectable to, the sensor that responds to the phenomenon, said first device
is operative to transmit a sensor data corresponding to the phenomenon to
said router over the one or more in-building or in-vehicle networks;

a second device in the building or in the vehicle comprising, or
connectable to, an actuator that affects the phenomenon, the second device is
operative to execute actuator commands received from said router over said
one or more in-building or in-vehicle networks; and

a control server external to the building or to the vehicle storing said
control logic and coupled to said router over the Internet via the external
network,

wherein said control server is operative to receive the sensor data
from said router, to produce actuator commands in response to the received
sensor digital data according to said control logic, and to transmit the
actuator commands to said second device via said router.

As the disclosure explains, Appellant’s invention is a control system
used in connection with a building or vehicle, where the system uses a server
implementing gateway or control functionalities. See Abstract; Spec. 1. To
this end, the invention uses sensors that provide information on
environmental conditions and events, and actuators that effect or generate a
physical phenomenon responsive to an electrical command, which can be an
electrical signal (e.g., voltage or current), or change a device’s characteristic,
such as its resistance or impedance. Spec. 16–18.
A key aspect of the invention is that controller functionality can be
integrated in a server 151 external to the building as shown in Figures 15
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and 15a, where sensor data is relayed to the controller via a router inside a
building and the Internet. See Spec. 162–63. As shown in Figure 15a,
command data is sent from the server to field units via the Internet, the
router, and associated control networks within the building. See id.
Turning to claim 1, we first note that the claim recites a system and,
therefore, falls within the machine category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely (1) collecting information via sensors; (2) analyzing
the information; and (3) producing/transmitting actuator commands as a
response. See Non-Final Act. 12; Ans. 11. To determine whether a claim
recites an abstract idea, we (1) identify the claim’s specific limitations that
recite an abstract idea, and (2) determine whether the identified limitations
fall within certain subject matter groupings, namely, (a) mathematical
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concepts6; (b) certain methods of organizing human activity7; or (c) mental
processes.8
Here, apart from the recited “actuator,” “sensor,” “network,” “router,”
“first device,” “second device,” and “control server,” all of claim 1’s recited
limitations fit squarely within at least one of the above categories of the
USPTO’s guidelines. When read as a whole, the recited limitations are
directed to (1) obtaining information regarding a phenomenon; (2) analyzing
this information remotely; and (3) providing an associated instruction to
affect the phenomenon.
First, despite reciting a first device and associated sensor, a human
can nonetheless (1) “respond[] to the phenomenon” by sensing its
characteristics, such as by merely observing the phenomenon, and (2)
transmit corresponding data to a remote location by communicating that
observation to another person, such as a colleague. Cf. CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a
recited step that utilized a map of credit card numbers to determine the

6 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
7 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
8 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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validity of a credit card transaction could be performed entirely mentally by
merely using logical reasoning to identify a likely instance of fraud by
merely observing that numerous transactions using different credit cards all
originated from the same IP address); TLI Comm., LLC v. AV Automotive,
LLC, 823 F.3d 607, 610–14 (Fed. Cir. 2016) (holding ineligible claims
reciting recording and administering digital images including (1) recording
images using a digital pick-up unit in a telephone unit; (2) storing the
recorded images; (3) transmitting data including the images and
classification information to a server; (4) extracting the received
classification information; and (5) storing the images in the server
considering that information); In re Salwan, 681 F. App’x 938, 939–41 (Fed.
Cir. 2017) (unpublished) (holding ineligible claims reciting, among other
things, receiving medical records information and transmitting reports where
the claimed invention’s objective was to enable electronic communication of
tasks that were otherwise done manually using paper, phone, and facsimile
machine); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed.
Cir. 2018) (noting that a nontechnical human activity of passing a note to a
person who is in a meeting or conversation as illustrating the invention’s
focus, namely providing information to a person without interfering with the
person’s primary activity); LendingTree, LLC v. Zillow, Inc., 656 F. App’x
991, 993–94, 996 (Fed. Cir. 2016) (unpublished) (holding ineligible claims
reciting, among other things, (1) receiving selection criteria from lending
institutions and credit data from a computer user, and (2) forwarding the
credit data to selected lending institutions as directed to an abstract idea).
Second, despite reciting a control server, a human, such as a
colleague, could (1) receive the data corresponding to the phenomenon; (2)
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analyze that data entirely mentally or with pen and paper; (3) based on this
analysis, produce an associated instruction or command; and (4) transmit the
command to the observer either orally or in writing to affect the
phenomenon.
For example, an employee in an office building may observe that his
or her computer monitor does not display anything, and call a help desk in
another building informing an information technology (IT) technician of this
observed phenomenon. Upon receiving and analyzing this data based on the
technician’s knowledge and experience, the technician could determine that
the problem may be due to the monitor not receiving electrical power. To
remedy this problem, the technician could then produce and transmit an
instruction or command to the employee by telling the employee to plug the
monitor in a wall outlet to provide electrical power to the monitor, thus
affecting the phenomenon.
In short, given their high level of generality, the recited limitations
involve both mental processes and certain methods of organizing human
activity and, therefore, recite abstract ideas. First, the recited limitations
involve mental processes, at least to the extent that humans can not only
observe phenomena, but also think about such observed phenomena to
determine an associated command to affect the phenomena, as in the above
example. That is, apart from the recited “actuator,” “sensor,” “network,”
“router,” “first device,” “second device,” and “control server,” the above-
noted functions could be performed entirely mentally or by using pen and
paper and, therefore, they fall squarely within the mental processes category
of the USPTO’s guidelines and, accordingly, recite an abstract idea. See
Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including
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observation and evaluation). Cf. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a recited step that
utilized a map of credit card numbers to determine the validity of a credit
card transaction could be performed entirely mentally by merely using
logical reasoning to identify a likely instance of fraud by merely observing
that numerous transactions using different credit cards all originated from
the same IP address).
Second, the recited limitations recite abstract ideas because they also
involve certain methods of organizing human activity, at least with respect
to communicating information between people, such as phenomenon
observations and associated commands to affect the phenomenon as in the
above example. See Guidance, 84 Fed. Reg. at 52 (listing exemplary
methods of organizing human activity, including personal interactions and
following rules or instructions). Cf. Salwan, 681 F. App’x at 939–41
(holding ineligible claims reciting, among other things, receiving medical
records information and transmitting reports where the claimed invention’s
objective was to enable electronic communication of tasks that were
otherwise done manually using paper, phone, and facsimile machine);
Interval Licensing, 896 F.3d at 1344 (noting that a nontechnical human
activity of passing a note to a person who is in a meeting or conversation as
illustrating the invention’s focus, namely providing information to a person
without interfering with the person’s primary activity); LendingTree, 656 F.
App’x at 993–94, 996 (holding ineligible claims reciting, among other
things, (1) receiving selection criteria from lending institutions and credit
data from a computer user, and (2) forwarding the credit data to selected
lending institutions as directed to an abstract idea).
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Therefore, apart from the recited “actuator,” “sensor,” “network,”
“router,” “first device,” “second device,” and “control server,” all of claim
1’s recited limitations are within the mental processes and certain methods
of organizing human activity categories of the USPTO’s guidelines and,
therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52.
Notably, the recited “actuator,” “sensor,” “network,” “router,” “first
device,” “second device,” and “control server” are the only recited elements
beyond the abstract idea, but these additional elements, considered
individually and in combination, do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
In reaching this conclusion, we are not persuaded that the claimed
invention is tied to a particular machine or apparatus to satisfy the machine-
or-transformation test as Appellant seems to suggest.9 See App. Br. 29–30.
To be sure, a claim that transforms a particular article to another state or
thing or is tied to a particular machine to satisfy the machine-or-
transformation test can be a “useful clue” to eligibility in the Alice/Mayo

9 Although the machine-or-transformation test applies generally to process
claims, we nevertheless see no reason to treat independent system claim 1
any differently with respect to its eligibility, just as the U.S. Supreme Court
did for the system claims in Alice. See Alice, 573 U.S. at 208 (“[T]he system
claims are no different from the method claims in substance.”). This
approach is also consistent with the Federal Circuit’s approach for the
computer-readable medium claims in CyberSource, as well as its
predecessor court’s treating an apparatus claim as a method claim for
eligibility purposes in In re Abele, 684 F.2d 902 (CCPA 1982). See
CyberSource, 654 F.3d at 1374 (noting that the underlying invention for
both the method and computer-readable medium claims was a method for
detecting credit card fraud—not a manufacture for storing computer-
readable information); see also id. (noting that the Abele court treated
apparatus claim 7 as a method claim for purposes of determining eligibility).
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framework. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014) (quoting Bilski v. Kappos, 561 U.S. 593, 594 (2010)); see also In
re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff’d sub nom. Bilski, 561 U.S.
at 593. Despite not being the sole eligibility test, the machine-or-
transformation test can nevertheless indicate whether additional elements
integrate the exception into a practical application. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP §§ 2106.05(b), (c)).
It is well settled, however, that whether a recited device is a tangible
system or, in 35 U.S.C. § 101 terms, a “machine,” is not dispositive.
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019)
(quoting In re TLI Commc’ns, 823 F.3d 607, 611 (Fed. Cir. 2016) (“[N]ot
every claim that recites concrete, tangible components escapes the reach of
the abstract-idea inquiry.”). For a machine to impose a meaningful limit on
the claimed invention, it must play a significant part in permitting a claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly. Versata
Dev. Grp. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see
also MPEP § 2106.05(b)(II) (citing Versata). The latter role is the case here,
for the recited router, sensor, actuator, and devices are merely obvious
mechanisms that achieve the recited solution more quickly, namely (1)
obtaining information regarding a phenomenon; (2) analyzing this
information remotely; and (3) providing an associated instruction to affect
the phenomenon faster than by using manual methods. That is, despite the
recited tangible components that are used to achieve this end, the focus of
the claim is nonetheless directed to (1) obtaining information regarding a
phenomenon; (2) analyzing this information remotely; and (3) providing an
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associated instruction to affect the phenomenon, albeit using computer- and
network-based components to achieve that end. Cf. ChargePoint, 920 F.3d
at 772–73 (holding ineligible claim reciting a network-controlled charge
transfer system for electric vehicles comprising, among other things, a
communication device configured to connect a controller to a mobile
wireless communication device for communication between the electric
vehicle operator and the controller); see also id. at 772 (noting that the lack
of an indication that (1) the disclosed invention was intended to improve the
recited components, including the communications devices, or (2) that the
inventors viewed the combination of those components as their invention).
So, leaving aside the fact that satisfying the machine-or-
transformation test is not dispositive to eligibility, see Bilski, 561 U.S. at
604, that test is not satisfied here in any event. Therefore, the recited
additional elements, namely the recited “actuator,” “sensor,” “network,”
“router,” “first device,” “second device,” and “control server,” do not
integrate the exception into a practical application. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(b), (c)).
We also find unavailing Appellant’s contention that the claimed
invention is eligible because it ostensibly improves the communication field
by implementing a control loop using communication based on multiple
devices over multiple networks to detect when abnormalities occur. Appeal
Br. 31; Reply Br. 17–19. First, the claimed invention does not improve a
computer or associated components’ functionality or efficiency, or otherwise
change the way those devices function, at least in the sense contemplated by
the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327
(Fed. Cir. 2016). The claimed self-referential table in Enfish was a specific
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type of data structure designed to improve the way a computer stores and
retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer’s functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here is directed to, at a high level of generality, (1) obtaining
information regarding a phenomenon; (2) analyzing this information
remotely; and (3) providing an associated instruction to affect the
phenomenon. The claimed invention not only recites abstract ideas, namely
mental processes and certain methods of organizing human activity as noted
previously, but also does not improve a display mechanism as was the case
in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018) (distinguishing McRO).
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To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Appeal Br. 31; Reply Br. 17–19), we disagree. Even assuming, without
deciding, that the claimed invention can (1) obtain information regarding a
phenomenon; (2) analyze this information remotely; and (3) provide an
associated instruction to affect the phenomenon faster than doing so
manually, any speed increase comes from the capabilities of the generic
computer components—not the recited process itself. See FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App. 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer do not materially alter the patent eligibility of the claimed
subject matter.”) (quotation marks, bracketed alteration, and citation
omitted). Moreover, Appellant’s reliance on the Board decisions on page 18
of the Reply Brief is likewise unavailing, for not only do the facts in those
cases differ from those at issue here, as non-precedential decisions, those
cases are not binding on this panel in any event. See PTAB Standard
Operating Procedure 2 (Rev. 10) (“SOP 2”) § I(B),
https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FIN
AL.pdf.
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The Examiner’s reliance on the court’s decision in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) is reasonable
here, particularly since the recited actuator can be a display as the Examiner
indicates. See Non-Final Act. 12; see also Ans. 12; Spec. 33 (“An actuator
may be a display for presentation of visual data or information, commonly
on a screen . . . .”), 145 (same), 53 (“The actuator may be a monochrome,
grayscale or color display for visually presenting information . . . .”).
Notably, in this implementation, the display-based actuator can “affect a
phenomenon” by merely displaying information or changing the displayed
information responsive to an associated command.
Given this display-based implementation, the display-based invention
in Electric Power is analogous to the claimed invention. There, the court
held ineligible a recited method of detecting events on an interconnected
power grid from plural data streams in real time and analyzing those events,
where the method included, among other things, displaying event analysis
results and diagnoses, metrics, and concurrent visualization of measurements
from the data streams, and deriving a composite reliability indicator.
Electric Power, 830 F.3d at 1351–56. Our emphasis underscores two key
functions of the invention in Electric Power, namely “detecting” and
“displaying,” that are at issue here, namely with respect to the functions of
the recited sensor and actuator. Notably, in Electric Power, the claimed
invention was ineligible because it merely gathered and analyzed
information, and then displayed results—an abstract idea that is strikingly
similar to the one at issue here, particularly when the recited actuator is
merely a display as noted previously.
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Appellant’s contention that the claimed invention ostensibly does not
collect information (Reply Br. 15) is belied by the fact that sensor data is, in
fact, collected and sent to the control server for analysis to produce an
actuator command. Nevertheless, to the extent that Appellant contends that
the Examiner’s reliance on Electric Power is erroneous (see Reply Br. 15–
16), we disagree.
The display-based invention in University of Florida Research
Foundation, Inc. v. General Electric Co., 916 F.3d 1363 (Fed. Cir. 2019) is
also analogous to the claimed invention. There, the court held ineligible a
claim reciting a method of integrating physiologic treatment data that (1)
converted physiologic data received from at least two bedside machines into
machine-independent data; (2) performed at least one programmatic action
involving that data; and (3) presented results from that action upon a bedside
graphical user interface as directed to the abstract idea of collecting,
analyzing, manipulating, and displaying data. Univ. of Fla. Research
Found., 916 F.3d at 1365–69; see also TDE Petroleum Data Sol., Inc. v.
AKM Enter., Inc., 657 F. App’x 991, 992–94 (Fed. Cir. 2016) (unpublished)
(holding ineligible claims reciting automatically selecting a well operation
state upon determining validity of at least some mechanical and hydraulic
data received from associated systems as directed to the abstract idea of
storing, gathering, and analyzing data). Similarly, the claimed invention
here (1) obtains information regarding a phenomenon; (2) analyzes this
information remotely; and (3) provides an associated instruction to affect the
phenomenon which, as noted previously, can merely affect information
displayed on a display-based actuator.
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Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There,
instead of a computer network operating in its normal, expected manner by
sending a website visitor to a third-party website apparently connected with
a clicked advertisement, the claimed invention in DDR generated and
directed the visitor to a hybrid page that presented (1) product information
from the third party, and (2) visual “‘look and feel’” elements from the host
website. DDR, 773 F.3d at 1258–59. Given that particular Internet-based
solution, the court held that the claimed invention did not merely use the
Internet to perform a business practice known from the pre-Internet world,
but rather was necessarily rooted in computer technology to overcome a
problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, is directed to mental processes and certain methods of
organizing human activity, namely (1) obtaining information regarding a
phenomenon; (2) analyzing this information remotely; and (3) providing an
associated instruction to affect the phenomenon—albeit by using computer-
based components to achieve that end. The claimed invention here is not
necessarily rooted in computer technology in the sense contemplated by
DDR where the claimed invention solved a challenge particular to the
Internet. Although Appellant’s invention uses various computer-based and
networking components, the claimed invention does not solve a challenge
particular to the components used to implement this functionality.
In short, the claim’s focus is not on improving machines or computers
as tools, but rather on certain independently abstract ideas that use those
tools. See FairWarning, 839 F.3d at 1095 (quotation marks and citations
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omitted). As with the ineligible claimed invention in BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1284–91 (Fed. Cir. 2018), the claimed
invention does not improve a computer’s functionality or that of its
associated components. See BSG, 899 F.3d at 1288 (“While the presentation
of summary comparison usage information to users improves the quality of
the information added to the database, an improvement [in] . . . the
information stored by a database is not equivalent to an improvement in the
database’s functionality.”).
On this record, then, the claimed invention does not recite additional
elements that (1) improve a computer itself; (2) improve another technology
or technical field; (3) implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim; (4) transform
or reduce a particular article to a different state or thing; or (5) apply or use
the abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)–
(c), (e)). In short, the claim’s additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
In conclusion, although the recited functions may be beneficial by (1)
obtaining information regarding a phenomenon; (2) analyzing this
information remotely; and (3) providing an associated instruction to affect
the phenomenon, a claim for a useful or beneficial abstract idea is still an
abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379–80 (Fed. Cir. 2015).
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We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

Claims 1–3, 13, 31, 33–35, 38, 39, 100–102, 104, 107, 108, 117, 118, 120,
140, 142, 159, 168, 193, 198, 201, and 223: Alice/Mayo Step Two

Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited “actuator,” “sensor,” “network,” “router,” “first device,”
“second device,” and “control server”—considered individually and as an
ordered combination—do not provide an inventive concept that amounts to
significantly more than the abstract idea when reading claim 1 as a whole.
See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted
above, the claimed invention merely uses generic computing components to
implement the recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 30–32; Reply Br. 16), these limitations
are not additional elements beyond the abstract idea, but rather are directed
to the abstract idea as noted previously. See BSG, 899 F.3d at 1290
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional”)
(emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
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well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)).
Rather, the the recited “actuator,” “sensor,” “network,” “router,” “first
device,” “second device,” and “control server” are the only additional
recited elements whose generic computing functionality is well-understood,
routine, and conventional. See Mortgage Grader, 811 F.3d at 1324–25
(noting that components such an “interface,” “network,” and “database” are
generic computer components that do not satisfy the inventive concept
requirement); buySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”).
Accord Spec. 15–57 (describing generic computer components used to
implement the invention), Spec. 11–12 (describing known systems in
connection with Figure 1, some of which are shown in Figure 2); Non-Final
Act. 11; Non-Final Act. 12 (concluding that the recited (1) actuator
command; (2) router; (3) devices; and (4) control server are additional
elements that do not add significantly more than the abstract idea); Ans. 13
(noting that these elements are taught by the cited prior art).
As in Electric Power, the claimed invention here does not require (1)
a new source or type of information; (2) new techniques for analyzing that
information; (3) an inventive set of components or methods, such as
measurement devices or techniques that would generate new data; or (4)
invoke any inventive programming. See Electric Power, 830 F.3d at 1355.
Rather, as in Electric Power, the claimed invention here requires nothing
more than off-the-shelf, conventional computer, network, and display
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technology for gathering, sending, and presenting the desired information
via the recited display-based actuator as noted previously. See id.
We reach the same conclusion regarding the recited cable that can
carry electric power and a communication signal simultaneously in claims
104, 107, and 108, despite Appellant’s contention to the contrary (Appeal
Br. 32). Not only are such cables known in the art as noted in the
Specification, the Examiner also finds that they are in the cited prior art,
including Gelvin. See Non-Final Act. 28–29; Spec. 62 (discussing known
systems that use Broadband over Power Lines), 67 (citing known standards
for carrying power and data signals).
To the extent that Appellant contends that the Examiner allegedly did
not comply with the evidentiary requirements under the April 2018 USPTO
memorandum mandating these requirements for ineligibility rejections after
Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (Appeal Br.
30; Reply Br. 16), Appellant does not persuade us of error in this regard.
To be sure, the Examiner must show—with supporting facts—that certain
claim elements are well-understood, routine, and conventional where such a
finding is made. See Berkheimer, 881 F.3d at 1369 (noting that whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the invention is a factual determination). In light of this
factual determination, the USPTO issued a memorandum requiring that
Examiners support a finding that an additional element of a claim is well-
understood, routine, and conventional. Robert W. Bahr, Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO, Apr.
19, 2018 (“Berkheimer Memo.”), at 2–3 (noting that the Berkheimer
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decision clarifies the inquiry whether an additional element (or combination
of additional elements) represents well-understood, routine, and
conventional activity).
Although Appellant quotes Berkheimer for the notion that merely
because something is disclosed in a piece of prior art does not mean that it is
well-understood, routine, and conventional (Appeal Br. 16; Reply Br. 30),
this alone does not demonstrate error in the Examiner’s findings in this
regard. To be sure, the Berkheimer Memorandum indicates that merely
finding an additional element in a single patent or published application is
not sufficient to demonstrate that the additional element is well-understood,
routine, and conventional unless these publications demonstrate that the
additional element is widely prevalent or in common use in the relevant
field. See Berkheimer Memo. § III(A)(3).
But apart from merely alleging that the Examiner has not shown that
any single element or any combination thereof is well-understood, routine,
and conventional, Appellant does not persuasively rebut the Examiner’s
findings in this regard, including the Examiner’s taking of Official Notice,
which is one of the four acceptable findings explained in the Berkheimer
Memorandum. See Berkheimer Memo. § III(A)(4). To the extent that
Appellant contends that the arguments in the Briefs somehow constitute an
adequate and seasonable traversal of the Examiner’s taking of Official
Notice in this regard, including explaining why the noticed fact is not
considered to be widely prevalent or in common use in the relevant field
consistent with the requirements in Section 2144.03(C) of the MPEP, we
disagree. See Berkheimer Memo. § III(A)(4) (citing MPEP § 2144.03). Nor
does Appellant persuasively rebut the Examiner’s reliance on the
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Specification’s Background section in connection with these findings,
including the admitted prior art shown in Figure 1 and its associated
description on pages 6, 7, 11, and 12 of the Specification. See Ans. 12–13.10
In any event, to the extent that Appellant contends that the additional
recited elements, namely the recited “actuator,” “sensor,” “network,”
“router,” “first device,” “second device,” and “control server,” are not well-
understood, routine, and conventional, the evidence on this record, including
the cited case law, prior art, and Appellant’s own Specification, shows
otherwise.
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two when reading the claims as a whole. See Alice, 573 U.S. at 221; see
also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1–3, 13, 31, 33–35, 38, 39, 100–102, 104, 107, 108, 117, 118, 120,
140, 142, 159, 168, 193, 198, 201, and 223 as ineligible under § 101.

THE INDEFINITENESS REJECTION
We do not sustain the Examiner’s indefiniteness rejection of claims 2,
13, 31, 38, 39, 101, 102, 104, 107, 108, 117, 118, 120, 140, 142, 159, 168,
193, 198, and 201. Non-Final Act. 3–11. In the rejection, the Examiner

10 Although the Examiner cites paragraphs 17, 18, and 33 of the published
application (US 2013/0201316 A1) corresponding to the present application
(Ans. 12–13), these citations nevertheless correspond to pages 6, 7, 11, and
12 of the substitute Specification, which we refer to for clarity and
consistency.
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finds that various limitations and their associated functionalities in claims 2,
13, 31, 38, 39, 101, 102, 104, 107, 108, 117, 118, 120, 140, 142, 159, 168,
193, 198, and 201, such as the recited particulars of the router in claim 2, in-
building or in-vehicle networks in claim 31, etc., are not distinctly defined in
the Specification nor identified in the drawings, thus rendering their use
“unclear and confusing.” See Non-Final Act. 3–11; Ans. 5–11. The
Examiner adds that claim 13 is incomplete for omitting essential elements,
namely details regarding the piezoelectric effect measured by the
piezoelectric sensor, including temperature, pressure, acceleration, strain, or
force. Non-Final Act. 4; Ans. 6.
But as Appellant indicates (Appeal Br. 10), the test for definiteness
under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). Despite the Examiner’s
determinations to the contrary, we find the claims satisfy this test
particularly because the present application is written for those ordinarily
skilled in the art who come to the application with knowledge of what has
come before. See LizardTech, Inc. v. Earth Resource Mapping, Inc., 424
F.3d 1336, 1345 (Fed. Cir. 2005). Therefore, it is unnecessary to spell out
every detail of the invention; only enough must be included in the disclosure
to ensure the claims are clear, and convince a person of ordinary skill in the
art that the inventor possessed the invention, and to enable such a person to
make and use the invention without undue experimentation. See id.
Therefore, the Examiner’s indefiniteness rejection that is apparently
premised on the claims lacking sufficient details regarding the particular
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identified elements to render the claims unclear (see Non-Final Act. 3–11;
Ans. 5–11) runs counter to these fundamental legal principles and,
consequently, is untenable on this record. And to the extent that the
Examiner’s articulated basis for the indefiniteness rejection implicates a lack
of enablement or possession under § 112, first paragraph, such a rejection is
not before us, nor will we speculate in that regard here in the first instance
on appeal.
Nor does the fact that a claim is broad in scope mean that it is
indefinite. See In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is
not indefiniteness.”); MPEP § 2173.04 (citing Gardner). Therefore, the
Examiner’s “lack of detail” rationale for the indefiniteness rejection (see
Non-Final Act. 3–11; Ans. 5–11) runs counter to this fundamental legal
principle. Although the various recited elements that the Examiner identifies
in the rejection may lack detail, that does not mean the claims are indefinite:
rather, they are simply broad. Again, to the extent that the Examiner’s
articulated basis for the indefiniteness rejection implicates a lack of
enablement or possession under § 112, first paragraph, such a rejection is not
before us, nor will we speculate in that regard here in the first instance on
appeal.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 2, 13, 31, 38, 39, 101, 102, 104, 107, 108, 117, 118, 120, 140, 142,
159, 168, 193, 198, and 201 as indefinite.11

11 Although not dispositive to our decision, we note that the Examiner’s and
Appellant’s reliance on Wikipedia (Non-Final Act. 4; Ans. 6; Reply Br. 12)
is dubious, for such unreliable, non-peer-reviewed sources have low
probative value. See Bing Shun Li v. Holder, 400 F. App’x 854, 857 (5th
Cir. 2010) (unpublished) (noting Wikipedia’s unreliability and citing Badasa
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THE OBVIOUSNESS REJECTION OVER BELILES AND ABE
Regarding independent claim 1, the Examiner finds that Beliles
discloses every recited element except for a control server external to the
building or vehicle storing control logic and coupled to the router over the
Internet via the recited external network. Non-Final Act. 14–15. The
Examiner, however, cites Abe for teaching this feature in concluding that the
claim would have been obvious. Non-Final Act. 15–16.
Appellant argues that not only do the cited references fail to teach (1)
an external network; (2) control server; and (3) sensing and affecting the
same phenomenon, but the proposed combination of Abe and Beliles is
improper in any event. Appeal Br. 32–39; Reply Br. 19–21. According to
Appellant, the Examiner’s articulated rationale to combine the references is
improper because (1) the primary reference Beliles already has the
capabilities for which Abe was cited; (2) it is unclear why these two
references are analogous to each other; (3) the Examiner’s obviousness
rationale is inconsistent with the patentably-distinct inventions articulated in
the Examiner’s earlier restriction requirement; and (4) the Examiner picks
and chooses subject matter from different embodiments in Abe to arrive at
the claimed invention. Appeal Br. 35–39; Reply Br. 20–21. Appellant
argues various other recited limitations summarized below.

v. Mukasey, 540 F.3d 909, 910–11 (8th Cir. 2008)); see also Ex parte Three-
Dimensional Media Group, Ltd., No. 2009-004087, 2010 WL 3017280
(BPAI 2010) (non-precedential), at *17 (“Wikipedia is generally not
considered to be as trustworthy as traditional sources for several reasons, for
example, because (1) it is not peer reviewed; (2) the authors are unknown;
and (3) apparently anyone can contribute to the source definition”).
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ISSUES
I. Under § 103, has the Examiner erred by finding that Beliles and
Abe collectively would have taught or suggested:
(1) a control server external to a building or vehicle storing control
logic and coupled to a router over the Internet via the recited
external network as recited in claim 1?
(2) a third device external to the building, where the device is
operative to transmit additional sensor data corresponding to the
phenomenon to the control server over a network, where the control server is
operative to receive the additional sensor data and produce actuator
commands responsive to the received data according to control logic as
recited in claim 3?
(3) a device out of a group consisting of the router, first device,
second device, and control server is operative for communicating with
another device from the group over multiple data paths as recited in claim
117?
(4) the control server is operative to analyze the sensor data versus the
transmitted actuator commands as recited in claim 140?
(5) the analysis is used to estimate or determine a phenomenon’s
characteristics or parameter as recited in claim 142?
II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

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ANALYSIS
Claims 1, 100, and 223
On this record, we are not persuaded of error in the Examiner’s
obviousness rejection of independent claim 1. As shown in Beliles’s Figure
1 reproduced below, Beliles discloses a computer network 100 in a building
comprising, among other things, fire sensor 123 connected to sensor
translator 132 that is, in turn, connected to router 152 that is connected to
network cloud 110 to which fire suppression device 161 is connected. See
Beliles ¶¶ 15–17, 27–29, 34.

Beliles’s computer network 100 in Figure 1

Although physical-based events, such as detected fires, can be
conveyed from the sensors to monitoring/control system 140 using
proprietary signaling systems, such as an internal fire alarm system, these
events can also be sent over the Internet. Beliles ¶ 34. To the extent that
Appellant contends that this Internet-based functionality must be limited to
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an internal network within the building, and somehow cannot involve an
external network (see Reply Br. 19), we disagree. Not only is there no
persuasive evidence on this record to substantiate Appellant’s contention,
ordinarily skilled artisans would understand that external networks are the
very essence of the Internet and the World Wide Web. Therefore, Beliles at
least suggests an external network.
Given this Internet-based functionality, we see no error in the
Examiner’s reliance on Abe merely to show that providing an Internet-based
control apparatus 101 that is external to a building is known in the art as
shown in Abe’s Figure 15, and that providing such external control
functionality in connection with Beliles’s system would have been at least an
obvious variation. See Abe ¶ 93. That detected events associated with fires
can be conveyed over the Internet from the sensors to monitoring/control
system 140 as noted in Beliles’s paragraph 34 only bolsters the Examiner’s
findings and conclusions in this regard. Nor does Appellant persuasively
rebut the Examiner’s mapping of Abe’s control apparatus 101 to a control
server (see Ans. 16)—a mapping that we find reasonable on this record
given the control apparatus’s external control capabilities for in-building
networked sensor-based systems via Internet 300 in Figure 15. See Abe ¶¶
93–96. As the Examiner indicates, Beliles teaches sensing and affecting the
same fire-based phenomenon via fire sensors and a fire suppression
system—the latter initiated responsive to fire detected via the sensors. See
Ans. 14 (citing Beliles ¶¶ 17, 28).
Nor are we persuaded of error in the Examiner’s rationale for
combining Beliles and Abe despite Appellant’s arguments to the contrary
(see Appeal Br. 35–39; Reply Br. 19–21). A key aspect of the Examiner’s
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rationale relies on the control logic functionality of Abe’s control apparatus
in Figure 6, including its multiple input and threshold features, in connection
with the second embodiment of Figure 15. See Ans. 14–15. Given this
functionality, the Examiner concludes that the control logic of the
Abe/Beliles system under the proposed combination would enable analyzing
and using multiple input values from plural sensors along with threshold
values before generating actuator control commands. Ans. 15.
We see no error in these findings and conclusions. Although the
control logic functionality in Abe’s Figure 6 and corresponding paragraphs
56 to 58 pertain to Abe’s first disclosed embodiment, we nevertheless see no
reason why this control apparatus functionality could not also be provided in
conjunction with that of Abe’s second embodiment in Figure 15 as the
Examiner proposes despite Appellant’s arguments to the contrary (Appeal
Br. 38–39). First, although Figure 15 embodiment uses a control apparatus
101 instead of control apparatus 100 in Figure 1, the two respective control
apparatuses are nonetheless strikingly similar in many respects. As shown
in Abe’s Figures 2 and 15, control apparatus 101 has the same sections 11–
15 as control apparatus 100, where the latter section, namely control rule
accumulation section 14, has control rules that the Examiner maps to the
recited control logic. See Ans. 15. Given this striking similarity, the
Examiner’s reliance on Abe’s first and second embodiments is reasonable, at
least regarding the particular functionality from these embodiments on
which the Examiner relies.
Second, it is well settled that “[c]ombining two embodiments
disclosed adjacent to each other in a prior art patent does not require a leap
of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d
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982, 991 (Fed. Cir. 2009). That is the case here. In short, in light of Abe,
the Examiner’s proposed enhancement to Beliles is not based on
impermissible hindsight as Appellant alleges (Reply Br. 21), but rather uses
prior art elements predictably according to their established functions—an
obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007).
Appellant’s contention that it is ostensibly unclear why Beliles and
Abe are analogous to each other (Appeal Br. 37–38) is unavailing. Prior art
is analogous if it is (1) from the same field of endeavor regardless of the
problem addressed, or (2) reasonably pertinent to the particular problem with
which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). The analogous art test, then, does not ask whether the prior art
references are analogous to each other as Appellant seems to suggest (see
Appeal Br. 38–39), but rather asks whether the references are analogous to
the claimed subject matter. See id.; see also In re Kahn, 441 F.3d 977, 986-
87 (Fed. Cir. 2006). Because Beliles and Abe both involve commanding an
actuator responsive to a sensor response as the Examiner indicates (Ans. 16),
the references are not only in the same field of endeavor as Appellant’s
invention, but they are also reasonably pertinent to Appellant’s problem in
that regard.
Lastly, to the extent that Appellant contends that the Examiner’s
obviousness rationale is inconsistent with the patentably-distinct inventions
articulated in a restriction requirement made during prosecution (see Appeal
Br. 38), such a contention is unavailing. First, the propriety of the
Examiner’s restriction requirement that was made during prosecution is a
petitionable matter that is not before us, as are objections regarding
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procedural inconsistencies associated with that requirement. See MPEP
§ 706.01 (“[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition . . . .”); MPEP § 1002.02(c)
(requiring that Technology Center Directors decide petitions from an
Examiner’s final decision requiring restriction in patent applications).
Therefore, to the extent there are inconsistencies between the Examiner’s
restriction requirement and obviousness rejection, the Examiner’s restriction
requirement is not before us, nor are we bound by it. Rather, only the
Examiner’s obviousness rejection is before us—a rejection that is (1)
articulated in the non-final Office Action from which this appeal was taken,
and (2) based solely on the cited prior art.
Appellant’s request, then, that we remand the case to the Examiner to
issue a new Office Action withdrawing the earlier restriction requirement
(Appeal Br. 38) pertains to petitionable matters that are not before us, and
we therefore deny the request.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 100 and 223 not argued separately with particularity.

Claim 3
We also sustain the Examiner’s rejection of claim 3 reciting, in
pertinent part, a third device external to the building, where the device is
operative to transmit additional sensor data corresponding to the
phenomenon to the control server over a network, where the control server is
operative to receive the additional sensor data and produce actuator
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commands responsive to the received data according to control logic.
Despite Appellant’s arguments to the contrary (App. Br. 39–40; Reply Br.
22), we see no error in the Examiner’s reliance on the cited prior art for at
least suggesting the recited limitations for the reasons noted above and by
the Examiner. Non-Final Act. 16–17; Ans. 16–17 (citing Abe ¶¶ 38, 104–
105, 108; Figs. 15–16). That both Abe and Beliles use multiple sensors to
produce associated actuator commands only bolsters the Examiner’s
findings and conclusions in this regard. In short, the Examiner’s proposed
enhancement merely predictably uses prior art elements according to their
established functions—an obvious improvement. KSR, 550 U.S. at 417.
Appellant’s contention, then, that the Examiner’s combinability rationale is
ostensibly irrelevant (Appeal Br. 39–40; Reply Br. 22) is unavailing. To the
extent that Appellant contends that providing a third device as claimed in
connection with the Beliles/Abe system would have been uniquely
challenging or otherwise beyond the level of ordinarily skilled artisans, there
is no persuasive evidence on this record to substantiate such a contention.
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 3.

Claim 13
We also sustain the Examiner’s rejection of claim 13 reciting, in
pertinent part, a piezoelectric sensor, but for reasons different than those
articulated by the Examiner. In the rejection, the Examiner maps the recited
piezoelectric sensor to Abe’s temperature sensor 22 in Figure 1 that,
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according to the Examiner, “runs on the piezoelectric effect,” namely the
ability of certain materials to generate electric charge responsive to applied
mechanical stress. Because the Examiner acknowledges that a piezoelectric
sensor responds to mechanical stress as emphasized above, the Examiner’s
equating the recited piezoelectric sensor to one that senses temperature—an
entirely different parameter—is puzzling. That the Specification omits
temperature as one of the parameters measured by the disclosed
piezoelectric sensor only underscores the inconsistency in the Examiner’s
finding. See, e.g., Spec. 95 (noting that the disclosed sensor may be a
piezoelectric sensor whose piezoelectric effect is used to measure pressure,
acceleration, strain, or force). To the extent that the Examiner finds that
detecting temperature somehow involves applied mechanical stress that
enables such detection, there is no evidence on this record to support such a
finding, nor will we speculate in that regard here. Appellant’s contention,
then, that the Examiner improperly equated the recited piezoelectric sensor
to Abe’s temperature sensor 22 (Appeal Br. 40) has merit.
Nevertheless, we see no reason why Beliles’s motion sensor 121 or
Abe’s motion sensor 21 cannot be a piezoelectric sensor, particularly given
the Specification’s description of motion sensors that use piezoelectric
materials to measure dynamic changes in mechanical variables, such as
acceleration, vibration, and mechanical shock. See Spec. 95–96. Such an
enhancement uses prior art elements predictably according to their
established functions—an obvious improvement. See KSR, 550 U.S. at 417.
To the extent Appellant contends otherwise (see Appeal Br. 40–41; Reply
Br. 22–23), we disagree.
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We, therefore, agree with the Examiner that providing the recited
piezoelectric sensor in connection with the Beliles/Abe system would have
been at least an obvious variation, but for reasons different than those
articulated by the Examiner. Accordingly, we sustain the Examiner’s
rejection of claim 13, but designate our affirmance as a new ground of
rejection.

Claims 117, 118, and 120
We also sustain the Examiner’s rejection of claim 117. Claim 117
depends from independent claim 100, and adds that a device out of a group
consisting of the router, first device, second device, and control server is
operative for communicating with another device from the group over
multiple data paths.
Despite Appellant’s arguments to the contrary (App. Br. 41), we see
no error in the Examiner’s reliance on the bus-connected network interfaces
210 with their respective data paths in Beliles’s Figure 2 for at least
suggesting the recited limitations for the reasons noted above and by the
Examiner. Non-Final Act. 17–18; Ans. 17–18 (citing Beliles ¶ 31; Fig. 2).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 117, and claims 118 and 120 not argued separately with particularity.

Claim 140
We also sustain the Examiner’s rejection of claim 140 reciting the
control server is operative to analyze the sensor data versus the transmitted
actuator commands. Despite Appellant’s arguments to the contrary (App.
Br. 41–42; Reply Br. 23), we see no error in the Examiner’s reliance on the
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cited prior art for at least suggesting the recited limitations for the reasons
noted above and by the Examiner. Non-Final Act. 18–19; Ans. 18 (citing
Abe ¶ 51; Figs. 2, 13). Not only does Appellant fail to persuasively rebut
the Examiner’s finding that the determination made by Abe’s control
apparatus at least suggests the recited analysis (see Non-Final Act. 18; Ans.
18), Appellant’s arguments regarding Beliles’s alleged failure to disclose
multiple data paths connecting the same two devices (Reply Br. 23) are also
unavailing, for claim 140 recites no such connection.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 140.

Claim 142
We also sustain the Examiner’s rejection of claim 142. Claim 142
depends from claim 140, and adds that the analysis is used to estimate or
determine a phenomenon’s characteristics or parameter. Our emphasis on
the term “or” underscores that only one of each of the groups of recited
alternatives need be taught or suggested by the prior art to satisfy the claim.
Despite Appellant’s arguments to the contrary (App. Br. 42–43), we
see no error in the Examiner’s reliance on the cited prior art for at least
suggesting the recited limitations for the reasons noted above and by the
Examiner. Non-Final Act. 18–19; Ans. 18 (citing Abe ¶¶ 51, 58; Figs. 2,
13). In short, Appellant fails to persuasively rebut the Examiner’s finding
that (1) the determination made by Abe’s control apparatus at least suggests
the recited analysis, and (2) this analysis is used to at least determine a
parameter associated with a phenomenon, namely the determined value that
is outputted based on the analysis. See Non-Final Act. 18–19; Ans. 18.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 142.

THE REJECTION OVER BELILES, ABE, AND ANSARI
We also sustain the Examiner’s rejection of claim 31 over Beliles,
Abe, and Ansari. Non-Final Act. 21–23; Ans. 19. Claim 31 depends from
claim 1, and recites, in pertinent part, that the router, first device, second
device, sensor, or actuator are addressable in a digital data network using (1)
distinct locally administered addresses, or (2) universally administered
digital addresses stored in a respective device’s memory. Our emphasis on
the term “or” underscores that only one of each of the groups of recited
alternatives need be taught or suggested by the prior art to satisfy the claim.
Therefore, to the extent that Appellant contends that the claimed
invention addresses multiple devices (see Appeal Br. 44), such a contention
is not commensurate with the scope of the claim that need only address one
device given the alternative language emphasized above. Nevertheless,
despite Appellant’s arguments to the contrary (App. Br. 43–44; Reply Br.
23–24), we see no error in the Examiner’s reliance on the cited prior art for
at least suggesting the recited limitations for the reasons noted above and by
the Examiner. Non-Final Act. 21–23; Ans. 19 (citing Ansari ¶ 116). That
both Ansari’s gateway device 10 and client endpoints are assigned Internet
Protocol (IP) addresses in Ansari’s paragraph 116 only bolsters the
Examiner’s findings and conclusions in this regard. Appellant’s contention,
then, that Ansari’s paragraph 116 is directed to a single device, namely the
gateway (Appeal Br. 44), is overstated given the multiple addressed devices
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in this paragraph. In any event, only one device need be addressed under the
terms of the claim as noted above.
Nor do we find error in the Examiner’s articulated rationale to
combine Ansari’s teachings with those of the other cited references. First, to
the extent that Appellant contends that a gateway, such as that disclosed in
Ansari, is not a router (see Appeal Br. 44), we disagree, for routers and
gateways are synonymous in the art, or at least obvious variations. See
DICTIONARY OF COMPUTER SCIENCE, ENGINEERING, AND TECHNOLOGY 429
(Phillip A. Laplante ed. 2001) (noting that a router is also called a gateway).
Second, providing addressable devices, such as those in Ansari, in
connection with the Beliles/Abe system would, among other things, facilitate
identifying and communicating with those devices over a network as the
Examiner indicates. See Non-Final Act. 23. In short, the Examiner’s
proposed enhancement uses prior art elements predictably according to their
established functions—an obvious improvement. KSR, 550 U.S. at 417.
Lastly, although Appellant argues for the first time on page 23 of the
Reply Brief that Ansari is non-analogous art, this argument was not raised in
the Appeal Brief and is, therefore, waived as untimely. See 37 C.F.R.
§ 41.41(b)(2). Nor has good cause been shown to raise this new argument in
the first instance in the Reply Brief.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 31, and claims 33–35 not argued separately with particularity.

THE REJECTION OVER BELILES, ABE, AND NOONAN
We also sustain the Examiner’s rejection of claim 38 over Beliles,
Abe, and Noonan. Non-Final Act. 24–26; Ans. 19. Claim 38 depends from
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claim 1, and recites that the router, first device, or second device are
connectable to be powered from a direct current (DC) or alternating current
(AC) power supply source, and further comprising a power supply housed
within the respective device enclosure, and coupled to be powered from the
power source and to power at least part of the respective device.
Despite Appellant’s arguments to the contrary (App. Br. 44–45; Reply
Br. 24), we see no error in the Examiner’s reliance on the cited prior art for
at least suggesting the recited limitations for the reasons noted above and by
the Examiner. Non-Final Act. 24–26; Ans. 19 (citing Noonan ¶¶ 2, 38).
Appellant’s contention that the Examiner did not explain why Beliles
and Noonan are analogous to each other (Appeal Br. 44) is unavailing. Prior
art is analogous if it is (1) from the same field of endeavor regardless of the
problem addressed, or (2) reasonably pertinent to the particular problem with
which the inventor is involved. Bigio, 381 F.3d at 1325. The analogous art
test, then, does not ask whether the prior art references are analogous to each
other as Appellant seems to suggest (see Appeal Br. 44), but rather asks
whether the references are analogous to the claimed subject matter. See id.;
see also Kahn, 441 F.3d at 986–87. Because Noonan’s system processes
data acquired from multiple networked devices as the Examiner indicates
(Ans. 16), the references are at least reasonably pertinent to Appellant’s
problem in that regard. In short, the Examiner’s proposed enhancement uses
prior art elements predictably according to their established functions—an
obvious improvement. KSR, 550 U.S. at 417.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 38, and claims 39 not argued separately with particularity.

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THE REJECTION OVER BELILES, ABE, AND WECHS
We also sustain the Examiner’s rejection of claim 101 over Beliles,
Abe, and Wechs. Non-Final Act. 26–28; Ans. 19–20. Claim 101 depends
from claim 100, and recites, in pertinent part, that the actuator is an electric
light source that emits visible or non-visible light.
Despite Appellant’s arguments to the contrary (App. Br. 45–47), we
see no error in the Examiner’s reliance on the cited prior art for at least
suggesting the recited limitations for the reasons noted above and by the
Examiner. Non-Final Act. 26–27; Ans. 19–20 (citing Wechs ¶¶ 2, 5–8, 18).
Appellant’s contention that the Examiner did not explain why Beliles
and Wechs are analogous to each other (Appeal Br. 46) is unavailing. Prior
art is analogous if it is (1) from the same field of endeavor regardless of the
problem addressed, or (2) reasonably pertinent to the particular problem with
which the inventor is involved. Bigio, 381 F.3d at 1325. The analogous art
test, then, does not ask whether the prior art references are analogous to each
other as Appellant seems to suggest (see Appeal Br. 46), but rather asks
whether the references are analogous to the claimed subject matter. See id.;
see also Kahn, 441 F.3d at 986–87. Because Wechs’s system controls an
actuator-based light source, namely infrared light emitting diode (LED) 12
as noted in paragraphs 6, 7, and 18, Wechs is at least reasonably pertinent to
Appellant’s problem, at least with respect to commanding an actuator and,
therefore, is analogous art. In short, the Examiner’s proposed enhancement
uses prior art elements predictably according to their established functions—
an obvious improvement. KSR, 550 U.S. at 417.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 101, and claim 102 not argued separately with particularity.
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THE REJECTION OVER BELILES, ABE, AND GELVIN
Claim 104
We also sustain the Examiner’s rejection of claim 104 over Beliles,
Abe, and Gelvin. Non-Final Act. 28–30; Ans. 20. Claim 104 depends from
claim 100, and recites, in pertinent part, a wired network using a cable
connectable to carry (1) a DC or AC power signal, and (2) a communication
signal simultaneously.
Despite Appellant’s arguments to the contrary (App. Br. 47–49), we
see no error in the Examiner’s reliance on the cited prior art for at least
suggesting the recited limitations for the reasons noted above and by the
Examiner. Non-Final Act. 28–30; Ans. 20 (citing Gelvin ¶¶ 4, 322). First,
Gelvin’s teaching in paragraph 322 of providing interconnections with
telephone wire that can convey both information and DC power at least
suggests the recited cable’s simultaneous power/signal carrying capability.
To the extent that Appellant contends that Gelvin’s telephone wire in
paragraph 322 is somehow incapable of carrying DC power and
communication signals simultaneously (see Appeal Br. 48), there is no
persuasive evidence on this record to substantiate such a contention.
Nor do we see any reason why this functionality could not be
provided in connection with the Beliles/Abe system as the Examiner
proposes. In short, the Examiner’s proposed enhancement uses prior art
elements predictably according to their established functions—an obvious
improvement. KSR, 550 U.S. at 417. Because Gelvin provides network-
based access to, among other things, sensors and controls as the Examiner
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indicates (Ans. 20), Gelvin is at least reasonably pertinent to Appellant’s
problem and, therefore, is analogous art. See Bigio, 381 F.3d at 1325.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 104.

Claim 107
We also sustain the Examiner’s rejection of claim 107 reciting, in
pertinent part, the power and communication signals are carried concurrently
over the same wires in the cable. Despite Appellant’s arguments to the
contrary (App. Br. 49–50), we see no error in the Examiner’s reliance on the
cited prior art for at least suggesting the recited limitations for the reasons
noted above and by the Examiner. Non-Final Act. 30; Ans. 21 (citing
Gelvin ¶ 322).
First, Appellant’s arguments regarding withdrawn claim 105 are
irrelevant here as the Examiner indicates. See Ans. 21. Second, to the
extent that Appellant contends that Gelvin’s telephone wire in paragraph 322
is somehow incapable of carrying DC power and communication signals
concurrently (see Appeal Br. 50), there is no persuasive evidence on this
record to substantiate such a contention. On this record, Gelvin’s telephone
wire-based functionality at least suggests the ability to carry electric power
and communication signals concurrently on the same wires. Nor do we see
any reason why this functionality could not be provided in connection with
the Beliles/Abe system as the Examiner proposes. In short, the Examiner’s
proposed enhancement uses prior art elements predictably according to their
established functions—an obvious improvement. KSR, 550 U.S. at 417.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 107.

THE REJECTION OVER BELILES, ABE, AND ROFOUGARAN
We also sustain the Examiner’s rejection of claim 108 over Beliles,
Abe, and Rofougaran. Non-Final Act. 30–32; Ans. 21. Claim 108 depends
from claim 107, and recites, in pertinent part, that the power and
communication signals are carried using Frequency Division Multiplexing
(FDM).
Apart from disputing Rofougaran’s combinability with the other cited
prior art, Appellant does not dispute the Examiner’s particular findings from
Rofougaran in the rejection, at least regarding the Examiner’s mapping
particular cited disclosure in Rofougaran to corresponding limitations in
claim 108. See Non-Final Act. 30–31. Although these particular findings
are undisputed, we nevertheless note that the Examiner’s finding that
Rofougaran’s paragraph 174 teaches that communication slots may be,
among other things, frequency division multiple access (FDMA) slots of an
FDMA frame, is puzzling, for the Examiner’s finding tracks language used
in Rofougaran’s paragraph 94—not paragraph 174. Nevertheless, we treat
any error associated with this inconsistency as harmless on this record
particularly where, as here, that particular finding is undisputed.
What is disputed, however, is the Examiner’s rationale for combining
Rofougaran with the other cited prior art. See Appeal Br. 50–51; Reply Br.
24. Despite Appellant’s arguments to the contrary, we see no harmful error
in the Examiner’s rejection in this regard. See Non-Final Act. 30–32; Ans.
21. The Examiner’s rationale to combine the references, while perhaps
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inartfully articulated, nonetheless pertains to enhancing communication
using FDM (see Non-Final Act. 32; Ans. 21)—an enhancement that uses
prior art elements predictably according to their established functions—an
obvious improvement. See KSR, 550 U.S. 417.
Although the Examiner’s articulated basis for combining the
references pertains to wireless communication between devices—not using
FDM to carry power and communication signals concurrently over wired
connections as claimed—there is nevertheless at least some rational basis for
the Examiner’s rationale to combine the references, at least to the extent that
it is premised on using a known technique, namely FDM, to enhance
communicating distinct power and communication signals over wired
connections to yield a predictable result and, therefore, is reasonably
consistent with the fundamental obviousness principles articulated by the
Court in KSR. See, e.g., KSR, 550 U.S. at 417 (noting that if a technique has
been used to improve one device, and an ordinarily skilled artisan would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill).
In this sense, then, Rofougaran is at least reasonably pertinent to
Appellant’s problem of communicating signals concurrently over the same
communications medium, such as wires, and is, therefore, analogous art.
See Bigio, 381 F.3d at 1325. To the extent that Appellant contends that
using a known FDM technique, such as that in Rofougaran, to carry power
and communication signals over the same wires as the Examiner proposes,
would have been uniquely challenging or otherwise beyond the level of
ordinarily skilled artisans, there is no persuasive evidence on this record to
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substantiate such a contention. Accordingly, the weight of the evidence on
this record favors the Examiner.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 108.

THE REJECTION OVER BELILES, ABE, NOONAN, AND ANSARI
We also sustain the Examiner’s rejection of claim 120 over Beliles,
Abe, Noonan, and Ansari. Non-Final Act. 32–33; Ans. 21.
We do, however, note an inconsistency in the Examiner’s rejection.
Claim 120 depends from claim 118 that depends from claim 117 that
depends from claim 100. Claims 100, 117, and 118 were rejected over
Beliles and Abe, but claim 120 is rejected over Beliles, Abe, Noonan, and
Ansari. That is, in rejecting claim 120, the Examiner adds two references,
namely Noonan and Ansari, to the references that were cited to reject the
claims from which claim 120 depends.
But in the rejection of claim 120, the Examiner finds that the
combination of Beliles, Abe, and Noonan discloses “all of the elements with
respect to claim 118”— a finding inconsistent with the Examiner’s
articulated rejection of claim 118 that is based solely on Beliles and Abe.
Compare Non-Final Act. 32 with Non-Final Act. 18.
Given this inconsistency, we agree with Appellant that not only is
Noonan’s relevance regarding the rejection of claim 120 unclear on this
record, the Examiner’s attempt to clarify this ambiguity by indicating that
claim 118 is rejected over Beliles, Abe, and Noonan (Ans. 21)—a statement
that runs counter to the rejection of claim 118 that is based solely on Beliles
and Abe—only exacerbates the confusion in this regard.
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Nevertheless, we treat this error as harmless on this record, for it is
clear from the rejection of claim 120 that the Examiner relies on (1) Ansari
for teaching the first alternative recited in the claim, namely that at least two
network interfaces use different transceivers or modems, and (2) Beliles for
teaching the second recited alternative, namely that all network interfaces
use different transceivers or modems. See Non-Final Act. 33. In other
words, Noonan is merely cumulative to the other references cited in
Examiner’s rejection that relies solely on the other references’ teachings.
In addition, claim 120’s alternative language is significant here.
Because the claim recites that at least two or all network interfaces use
different transceivers or modems, only one alternative need be taught or
suggested by the prior art to satisfy the claim. And here, satisfying the
second alternative, namely that all interfaces use different transceivers or
modems, would also satisfy the first “at least two interfaces” alternative.
As noted above, the Examiner cites Ansari for teaching the first
alternative, and Beliles for teaching the second alternative. See Non-Final
Act. 33. So even if we were to accept Appellant’s contentions regarding the
alleged impropriety of combining Ansari with the other cited references in
connection with the first alternative of claim 120 (see Appeal Br. 51–52;
Reply Br. 25),12 Appellant still does not persuasively rebut the Examiner’s
reliance on Beliles for teaching the other recited alternative noted above.

12 Appellant’s contention regarding the Examiner’s reliance on Ansari that
“there is rationale or reasoning provided by this reference analogous or any
motivation for combining” (Appeal Br. 51; emphasis added) is puzzling as it
seemingly supports the propriety of the Examiner’s proposed combination.
Nevertheless, we presume that this sentence was intended to mean that the
Examiner’s rejection is improper.
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We are, therefore, not persuaded of harmful error in the Examiner’s rejection
for that reason alone. Because Ansari is technically cumulative to Beliles in
this regard, any error associated with the Examiner’s reliance on Ansari
regarding claim 120 is deemed harmless on this record. Accordingly, the
weight of the evidence on this record favors the Examiner.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 120.

THE REJECTION OVER BELILES, ABE, ANSARI, AND BALGARD
We also sustain the Examiner’s rejection of claim 198 over Beliles,
Abe, Ansari, and Balgard. Non-Final Act. 33–35; Ans. 22. Claim 198
depends from claim 193 that depends from claim 100. Claim 198 recites, in
pertinent part, that the WAN is a wireless broadband network over a licensed
or unlicensed radio frequency band, where the unlicensed band is an
Industrial, Scientific and Medical (ISM) radio band.
Our emphasis on the term “or” underscores that only one alternative
need be taught or suggested by the prior art to satisfy the claim. So, even if
we were to accept Appellant’s contentions regarding the alleged impropriety
of combining Balgard with the other cited references in connection with the
second alternative of claim 198, namely the unlicensed band alternative (see
Appeal Br. 52–53), Appellant still does not persuasively rebut the
Examiner’s reliance on Ansari for teaching the first alternative, namely
licensed band alternative, even assuming, without deciding, that Ansari
teaches away from using an unlicensed band as Appellant contends. See
Appeal Br. 53. That Appellant admits that Ansari teaches using a licensed
band on page 53 of the Appeal Brief is telling in this regard.
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Because Balgard is technically cumulative to the other cited
references, including Ansari, due to this alternative language, we see no
harmful error in the Examiner’s reliance on Balgard in the rejection. In
short, providing such a licensed band for a WAN in connection with the
Beliles/Abe system is an enhancement that uses prior art elements
predictably according to their established functions—an obvious
improvement. See KSR, 550 U.S. 417.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 198.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
2, 13, 31,
38, 39,
101, 102,
104, 107,
108, 117,
118, 120,
140, 142,
159, 168,
193, 198,
201
112,
second
paragraph
Indefiniteness 2, 13, 31,
38, 39,
101, 102,
104, 107,
108, 117,
118, 120,
140, 142,
159, 168,
193, 198,
201

1–3, 13,
31, 33–
35, 38,
39, 100–
102, 104,
107, 108,
117, 118,
120, 140,
101 Eligibility 1–3, 13, 31,
33–35, 38,
39, 100–
102, 104,
107, 108,
117, 118,
120, 140,
142, 159,

Appeal 2018-007694
Application 13/733,634

55
142, 159,
168, 193,
198, 201,
223
168, 193,
198, 201,
223
1–3, 13,
100, 117,
118, 140,
142, 159,
168, 193,
201, 223
103 Beliles, Abe 13
31, 33–35 103 Beliles, Abe,
Ansari
31, 33–35
38, 39 103 Beliles, Abe,
Noonan
38, 39
101, 102 103 Beliles, Abe,
Wechs
101, 102
104, 107 103 Beliles, Abe,
Gelvin
104, 107
108 103 Beliles, Abe,
Rofougaran
108
120 103 Beliles, Abe,
Noonan,
Ansari
120
198 103 Beliles, Abe,
Ansari,
Balgard
198
Overall
Outcome
1–3, 13,
31, 33–
35, 38,
39, 100–
102, 104,
107, 108,
117, 118,
120, 140,
142, 159,
168, 193,
198, 201,
223
1–3, 13, 31,
33–35, 38,
39, 100–
102, 104,
107, 108,
117, 118,
120, 140,
142, 159,
168, 193,
198, 201,
223
13
Appeal 2018-007694
Application 13/733,634

56

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)(1).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:

When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.

Appeal 2018-007694
Application 13/733,634

57
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED; 37 C.F.R. § 41.50(b)