PTAB reverses § 103 when Examiner's combination adds feature already present in primary reference

Takeaway: An Applicant appealed claims to a zoned HVAC system. The Examiner rejected as obvious using a combination of two references, Kolk and Petite. The Examiner stated that Kolk did not disclose a remote temperature control function, and asserted that Petite disclosed this feature as  "[an] additional function from remote location beside the utility." "Additional function" then served as the rationale for combining Kolk's HVAC system with Petite's remote temperature control. The Board reversed after finding that Kolk did provide remote temperature regulation. The Board reasoned that since Kolk already provided this feature, a POSITA would not view Petite's remote control as a reason for modification. (Ex parte Tessler, PTAB 2014.)

Details:

Ex parte Tessler
Appeal 2012-006616; Appl. No. 12/700,643; l 
Decided:  October 2, 2014

The application on appeal was directed to a HVAC system with a wireless thermostat. "[A] remote source communicates with a wireless controller [to control energy usage] and sends signals to the wireless controller via a gateway located near or, in one implementation, forming part of the wireless controller." The originally filed claims generally captured the interaction between the local gateway, the wireless transceiver, and the thermostat controller which allowed the user to changecontrol parameter(s) from a remote location.
 
The first Office Action included multiple rejections of the independent claims, including a § 103 rejection using Kolk and Petite. Kolk disclosed a temperature regulating system utilizing energy price information, and the Examiner relied on Kolk for most of the claim elements. The Examiner noted that Kolk disclosed a module that used telephone lines or the Internet to communicate with an outside source, but did not disclose gateway communication with a wireless receiver. The Examiner asserted that Petite disclosed this feature "as an alternative suitable communication." Also, while Kolk did not disclose a remote temperature control function, the Examiner asserted that Petite disclosed this as "additional function from remote location beside the utility."

This "alternative suitable communication" and "additional function" then served as the Examiner's specific rationale for combining. The rejection also mentioned the "predictable results" rationale from KSR. Finally, the Examiner asserted that it was "well known in the art that a HVAC with single zone and single thermostat can be extended to a HVAC system with multiple zones and multiple thermostats," and cited several references as evidence of this finding.

The Applicant made various amendments resulting in independent claims of different scope. Independent claims 1 and 19 were amended so that control of the thermostat was "separate from any utility based control" and the wireless transceiver was located in a housing assembly. Independent claim 13 was amended differently, to explicitly recite dual zones, thermostats, and transceivers. Claim 13 then read:

     13. A zoned HVAC system having two or more zones, comprising:
     a local gateway;
     a first thermostat for controlling a first zone of the zoned HVAC system, the first thermostat having:
          a first wireless transceiver for wirelessly communicating  with the local gateway of the building or other structure, wherein the local gateway is located remotely from the HVAC controller;
          a first controller coupled to the first wireless transceiver ... [and] configured to allow a user to change one or more of the first control parameters from a remote location on the communications network via the local gateway and the first wireless transceiver [of the first controller] ;
     a second thermostat for controlling a second zone of the zoned HVAC system, the second thermostat having:
          a second wireless transceiver ...
          a second controller... configured to allow a user to change one or more of the second control parameter from a remote location on the communications network via the local gateway and the second wireless transceiver [of the second controller].

In addressing the § 103 Kolk / Petite rejection, the Applicant argued each independent claim separately but focused mostly on independent claim 1. For claim 13, the Applicant argued that the combination did not disclose "many elements of claim 13 including, for example, a zoned HVAC system having two or more zones comprising [first and second thermostats for controlling respective zones." (Emphasis in original.) Despite this assertion, Applicant did not specifically explain how claim 13 distinguished over the combination made by the Examiner.

In a Final Office Action, the Examiner maintained the § 103 Kolk / Petite rejection. As an additional justification for the conclusion of obviousness, the Examiner also added these additional statements about Petite:

Petite et al. disclose remote monitoring and control device can either for utility company (C-1, L-60 to C-2, L-6) or environmental or safety systems (C-2, L-7-14) in the same field of endeavor for the purpose of providing multiple usages of the apparatus. Petite et al. also disclose the transceivers are electrically interfaced with the thermostat (C-5, L-58-64). 

The Applicant filed an After Final Response and argued:

[C]laim 13 recites, for example, a local gateway, and first and second thermostats each having a respective first or second wireless transceiver for wirelessly communicating with the local gateway. While multiple zone HVAC systems may have been known, Applicants submit that the recited first and second thermostats, each capable of communicating with the same local gateway, particularly in combination with the other elements of claim 13, cannot fairly be considered to be taught, discloses or suggested by Kolk et al. or Petite et al.
(Emphasis in original.)

The Examiner issued an Advisory Action simply restating the KSR predictable results rationale. The Applicant appealed, filing a Pre-Appeal Brief Request and then an Appeal Brief. Both handled the § 103 Kolk and Petite rejection by repeating earlier arguments. 

The Examiner's Answer maintained all rejections and responded to several Applicant arguments. With respect to claim 13, the Examiner referred to the three patents cited earlier as evidence that "multi-zones associated with multi-thermostats is well known in the art." The Examiner then explained how Petite disclosed local gateway communication

Referring to Fig.2, Petite discloses the same one local gateway 220 communicates with sensor  / actuator / transceiver 222 and sensor / actuator/transceiver  224. The sensor / actuator  can be thermostat (C-5, L-63). Therefore, one local gateway 220 is able to communicate with multiple thermostats 222 and 224 and the rejection is valid.

The Applicant filed a Reply Brief and addressed claim 13 as follows:

... Kolk et al. and Petite et al.,even when combined with [evidentiary reference] Liebl et al., cannot be fairly said to teach first and second thermostats as recited in claim 13. The Examiner has not provided any articulated reasoning with rational underpinning [as required by KSR] to support the conclusion of obviousness. The Examiner appears to be asserting that one could modify Kolk et al. to achieve the claimed method, which is an improper ground for obviousness. The Court in KSR further stated: "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." The Examiner has not provided any objective reason to modify Kolk et al. in the manner recited in claim 13, other than relying on the instant specification, which is clear error.

On appeal, the Board reversed the obviousness rejection of Kolk in view of Petite, finding that the Examiner's rationale for combining was deficient.

     We find that the Examiner’s stated reasoning, “so as to have an alternative suitable communication and remote HVAC control as additional function from remote location beside for the utility,” is based on the use of impermissible hindsight reconstruction in view of the Appellants’ disclosure. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
     At the outset, we note that for the reasons set forth supra, the Examiner does not establish that the remote user in Petite is not the utility company. [The Examiner instead relies on Petite's remote use by "environmental or safety systems."] Furthermore, we note that Kolk’s system is already remotely controlled. See Kolk, Fig. 1. We thus find the Examiner’s rejection insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to include Petite’s remote system into Kolk’s remote temperature regulating system. The Examiner has not provided any findings that either Kolk or Petite recognized a problem with the remote technique used in Kolk. As such, absent hindsight, we fail to see why one having ordinary skill in the art would have been led by the teachings of Petite to modify the temperature remote system of Kolk in the manner claimed.

My two cents: I picked this decision because it illustrates a good way to attack an obviousness rejection: advantageous function X provided by reference B is not a proper reason to combine if reference A already has advantageous function X. Here, the Board reasoned that since Kolk already allowed remote temperature regulation, a POSITA would not view Petite's remote control as a reason for modification.

The Applicant didn't really make this specific argument. Yeah, the Applicant argued the Examiner didn't provide an "objective" reason to combine, but that was made in the context of the Examiner's "multi-zone HVACs are well-known" statement. The Applicant essentially argued that "could modify to add the feature" is not a proper § 103 rationale. And that wasn't the rationale used by the Examiner.

I'm actually surprised by the reversal here, since the Examiner did include KSR's "predictable results" as a rationale. (An alternative one? As a supplemental explanation?). The Board usually summarily affirms that rationale with nothing more than a bit of hand-waving as to the factual findings required for this rationale. Here, the Board reversed the § 103 based on the explicit motivation from Petite, and appeared to ignore the "predictable results" rationale.

Finally, I note that the Examiner's factually findings about one of the features at issue -- remote temperature regulation were actually inconsistent. In discussing Kolk, the Examiner explicitly found "thermostat 26 including a communication module communicating with a remotely located outside source 40." Which is arguably a teaching of remote temperature regulation. But then the Examiner proceeded to disavow this teaching, finding that "Kolk does not disclose ... remote temperature control function." The Board appeared to make their own finding about this feature, and didn't comment about the Examiner's inconsistent findings.

Here's an interesting question: since already Kolko disclosed the feature at issue, there really isn't a need to combine with Petite to obtain this feature. The Board took this and reasoned that the Examiner's rationale was therefore improper. But why doesn't it make the rationale irrelevant, as opposed to improper? Sure, you need Petite for the other features missing from Kolk, and you need a modification rationale for each of those features. But not for the remote temperature regulation feature found in Kolk, right?