Unrrep States PATENT AND TRADEMARK OFFICE Patent and Trademark Office 3019.09 ‘on05/2021 or KARIG S351 STEPHEN R SECOMBE eae 290 NORTH D STREET NGUYEN UNH N BERMARDINO, CA 92401 wansan2i PAPER Please find below and/or attached an Office communication concerning this application or proceeding. ‘The me period for reply, iff any, is set in the attached communication, PTOL-908 (Re 047)Unrrep STATES PATENT AND TRADEMARK OFFICE ‘Commissioner for Patents Unites States Patent and Trademark Office P.O, Box 1450 Alexandria, VA 22373-1450 vw 90 900 DO NOT USE IN PALM PRINTER, (THHRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) UNIFIED PATENTS, LLC 1875 CONNECTICUT AVE., NW, 10TH FLOOR WASHINGTON, Dc 20009 EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM REEXAMINATION CONTROL NO. 90/019,009 PATENT UNDER REEXAMINATION 6275166. ART UNIT 3992 Enclosed is a copy of the latest communication from the United States Patent and Trademark Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)) Where this copy is supplied after the reply by requester, 37 CFR 1.536, or the time for filing a reply has passed, no submission on behalt of the ex parte reexamination requester will be acknowledged or considered (37 CFR 1.550(g)). PTOL-465 (Rev.07-04)Control No. Patent Under Reexamination Order Granting Request For eae 6275166 Ex Parte Reexamination Examiner ‘Art Unit | AIA (FITF) Status UNH M NGUYEN 3092 [No ~The MAILING DATE of this communication appears on the cover sheet with the correspondence address The request for ex parte reexamination filed 02/05/2021 has been considered and a determination has been made. An identification of the claims, the references relied upon, and the rationale supporting the determination are attached. Attachments: a) PTO-892, — b)@_~—- PTOYSB/08, ~—o))._ Other: 1. The request for ex parte reexamination is GRANTED. RESPONSE TIMES ARE SET AS FOLLOWS: For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication (37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c). For Requester’s Reply (optional): TWO MONTHS from the date of service of any timely filed Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED. If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester is permitted. ‘e-Requestor (if third party requestor ) PTOL-47iG/Rev 01-13) Office Action in £x Parte Reexamination Pan of Paper No, 20210208Application/Control Number: 90/019,009 Page 2 Art Unit: 3992 ORDER GRANTING REEXAMINATION REQUEST A substantial new question of patentability (*SNQ”) affecting claims 1-17 of U.S. Patent No. 6,275,166 (“the ‘166 patent”) is raised by the reexamination request filed 2/5/2021 (-Request”) The ‘166 patent has expired. The claims will be construed under the Phillips standard as described in MPEP 2258 1.G. References Cited in Request US. Patent 6,590,928 to Haartsen (“Haartsen”) U.S. Patent 6,044,062 to Brownrigg et al. (“Brownrigg”) U.S. Patent 5,657,317 to Mahany er al. (“Mahany”) USS. Patent 6.219,669 to Haff er al. (“Haff”) International Pub. WO 96/06490 to Smith ef al. (“Smith”) Anil Ahuja, Integrated M/E Design : Building Systems Engineering (1997) (“Ahuja”) Prosecution History The ‘166 patent is drawn to environmental control and monitoring of buildings, and more particularly to systems for controlling and monitoring heating, air conditioning, lighting, security, occupancy, and usage of distributed facilities such as hotels and the like. The application that became the ‘166 patent was filed with 17 claims. In a first Office action mailed 10/20/2000, claims 1, 7, 9-12 and 16 were rejected as being indefinite under 35,Application/Control Number: 90/019,009 Page 3 Art Unit: 3992 U.S.C. § 112, second paragraph; and claims 1-17 were rejected under 35 U.S.C § 103(a) as being unpatentable over Argyroudis (U.S. Patent 5,892,758) in view of Gilhousen et al, (U.S. Patent 4,901,307) and further in view of Kaiser et al. (U.S. Patent 6,060,996). In a response filed received 1/18/2001, the applicant argued that the prior art did not disclose a relay unit being an appliance controller that communicates with a headend computer using at least two others of the relay units. Specifically, the applicant argued that Argyroudis disclosed a telemetry system in which there were “separate communication links between the various components, with preference to wired communication at greater distances.”. Further, the applicant argued that Gilhousen was directed to a cellular communications network in which mobile devices communicated with repeaters to act as relay units but not with one another directly as repeaters. In addition, the applicant explained that Kaiser did not disclose communications to a transceiver through two other transceivers. Afier the applicant’s corrections to the drawings and specification, the original claims were allowed without amendment. In a statement of reasons for allowance, the examiner explained that “independent claims 1, 7, and 16, are allowed because the prior art of record (Argyroudis et al., Gilhousen et al, and/or Kaiser et al.) does not teach a relay unit being an appliance controller that communicates with a headend computer using at least two others of the relay units.”, Notably, not all of the independent claims require an appliance controller to be ather, the reason for allowance was based on the use of at least capable of being a relay uni two relay units to reach a destination. See, e.g Claim 16. References showing the allowable or noted features regarding claims 1, 7 and 16, as stated above, would provide a new technical teaching sufficient to raise a substantial new question of patentability.Application/Control Number: 90/019,009 Page 4 Art Unit: 3992 Proposed SNQs Requester proposes the following: SNQ 1: SNQ2: SNQ3: SNQ 4: SNQ5!: SNQ 6: Ahuja in view of Haartsen renders Claims 1-11 and 13-17 obvious under 35 U.S.C. $103 Ahuja in view of Haartsen, in further view of Brownrigg, renders Claims 2,8, 16, and 17 obvious under 35 U, $103 Ahuja in view of Haartsen, in further view of Mahany, renders Claims 10 obvious under 35 U.S.C. $103 Ahuja in view of Haartsen, in further view of Smith, renders Claim 12, obvious under 35 U.S.C. §103 Ahuja in view of Haartsen, in further view of Haff, renders Claims 16-17 obvious under 35 U.S.C. $103 Abuja in view of Haartsen, in further view of Brownrigg and Haff, renders Claims 16-17 obvious under 35 U.S.C. §103. 4Atp. 41, Its noted that the last proposed SNQs have been incorrectly numbered, they should have been § and 6 and not 6 and 7,Application/Control Number: 90/019,009 Page 5 Art Unit: 3992 Proposal Analysis SNQ I: Ahuja in view of Haartsen renders Claims 1-11 and 13-17 obvious under 35 U.S.C. §103, The examiner agrees an SNQ is raised by the proposal. Ahuja discloses programmable controller such as master lighting controllers and control panels ¢., an appliance controller) for interfacing with and controlling various appliances, such as lighting appliances, energy management devices, security locks and cameras, fire sensors, and HVAC systems, using “integrated building system automation (IBSA)" (ie., a distributed appliance system having ... a multiplicity of appliances) from a central controller or central computer (i a headend computer). See, e.g., Ahuja, 6-9 (describing various and appliances for building integration); 215, 219, 222. The central computer communicates via many gatewa) and controllers to manage these appliances, such as through BACnet or applicable LAN protocols. Id., 223-33; 237-39. Ahuja also discloses that the distributed appliance system includes many local controllers (i.e., a plurality of relay units), that relay communications in a “data communications network” to and from the headend computer, other controllers, peripheral equipment, and control devices (ic... one of the relay units being the appliance controller). Id, 222 28. However, to the extent Ahuja’s disclosure does not expressly disclose a plurality of relay units, one of the relay units being the appliance controller, such is obvious over Haartsen. Haartsen discloses a system in which a plurality of bridge units (ie., relay units) are used to relay communications between a master, or source, unit and a slave unit. Haartsen discloses that eachApplication/Control Number: 90/019,009 Page 6 Art Unit: 3992 of the relay units themselves may also act as slave units (i... one of the relay units being the appliance controller), such as relay units that are fixed/not portable, Haartsen., 13: 61-65; 15:10- 45, 16:61-63:18:44-65. Ahuja discloses the use of relay units, including more than one relay unit for establishing communications between an appliance unit and a central controller (i.c., a headend computer). And Haartsen discloses the use of two or more bridge units to connect a master/source unit with another slave unit, Haartsen., 15:38-45, 18:44-65. The combination of Ahuja and Haartsen teaches a relay unit being an appliance controller that communicates with a headend computer (claims 1 and 7) using at least (wo others of the relay units (claims 1, 7 and 16). This is the material that was missing from the prior art du 1g the original prosecution Ahuja and Haartsen provide a new technical teaching that was not present during the original prosecution as to claim 1,7 and 16. The combination of Ahuja and Haartsen appears to teach the key limitations of each claim. Accordingly, a reasonable examiner would have found Ahuja combined with Haartsen, important in considering the patentability of claims 1 and 7 along with its dependent claims, 2-5, 8-11, 13-15 and 17. A substantial new question of patentability is raised by the references. None of the cited references Ahuja or Haartsen was of the record. The teachings of Ahuja combined with Haartsen as discussed in the Request are not cumulative to any written dis cussion on the record of the teachings of the prior art, were not previously considered nor addressed during a prior examination, and the same question was not the subject of a final holding of invalidity in the Federal Courts.Application/Control Number: 90/019,009 Page 7 Art Unit: 3992 SNQs 2-4: SNQ2- Ahuja in view of Haartsen, in further view of Brownrigg, renders Claims 2, 8, 16, and 17 obvious under 35 U.S.C. $103. SNQ3- Ahuja in view of Haartsen, in further view of Mahany, renders Claims 10 obvious under 35 U.S.C. $103 SNQ4- Ahuja in view of Haartsen, in further view of Smith, renders Claim. 12, obvious under 35 U.S.C. $103 SNQ 2 further includes Brownrigg for disclosing or confirming that in rela ystems, it was known to include the address of every “hop” or relay unit, as well as the ultimate destination unit, in the header of a message. Brownrigg, 14: 5-22, 23-44. Therefore, Brownrigg was included for another limitation that was not part of the noted allowable features; as such, any plausible combination of valid prior art references including Ahuja and Haartsen also raises an SNQ for claims 16 and 17. Since Ahuja and Haartsen raises an SNQ as noted in i independent claims | and 7, respectively, any plausible combination of valid prior art references including Ahuja and Haartsen also raises an SNQ for claims 2, 8, 10 and 12, which depends from claim 1 and 7.Application/Control Number: 90/019,009 Page 8 Art Unit: 3992 Ahuja and Haartsen combined with Brownrigg, or Mahany, or Smith provide a new technical teaching that was not present during the original prosecution as to claims 2, 8, 16 and 17; or 10; or 12, respectively. Accordingly, a reasonable examiner would have found the indicated combinations, important in considering the patentability of claims 2, 8, 16 and 17; or 10; or 12. A substantial new question of patentability is raised by the references. None of the cited references, Ahuja, Haartsen, Brownrigg, Mahany, or Smith, was of the record. The teachings of Ahuja and Haartsen combined with Brownrigg, or Mahany, or Smith as discussed in the Request are not cumulative to any written discussion on the record of the teachings of the prior art, were not previously considered nor addressed during a prior examination, and the same question was not the subject of a final holding of invalidity in the Federal Courts. SNQ Ahuja in view of Haartsen, in further view of Haff, renders Claims 16-17 obvious under 35 U.S.C. $103. SNQ 5 further includes Haff for disclosing a communication system in which serial numbers of communication are tracked and used as part of a unit’s unique address. Haff, 10: 27-39; 11: 65-12: 36:2. 34, *atp. 41, Its noted that the last proposed SNQs have been incorrectly numbered, they should have been $ and 6 and not 6 and 7,Application/Control Number: 90/019,009 Page 9 Art Unit: 3992 Therefore, Haff was included for another limitation that was not part of the noted allowable features; as such, any plausible combination of valid prior art references including Ahuja and Haartsen also raises an SNQ for claims 16 and 17. Ahuja and Haartsen combined with Haff provide a new technical teaching that was not present during the original prosecution as to claims 16 and 17. Accordingly, a reasonable examiner would have found the indicated combinations, important in considering the patentability of claims 16 and 17. A substantial new question of patentability is raised by the references. None of the cited references, Ahuja, Haartsen, or Haff, was of the record. The teachings of Ahuja and Haartsen combined with Haff as discussed in the Request are not cumulative to any written discussion on the record of the teachings of the prior art, were not previously considered nor addressed during a prior examination, and the same question was not the subject of a final holding of invalidity in the Federal Courts. SNQ6: Ahuja in view of Haartsen, in further view of Brownrigg and Haff, renders Claims 16-17 obvious under 35 U.S.C. §103. In this SNQ, Brownrigg again was included for disclosing or confirming that in relay systems, it was known to include the address of every “hop” or relay unit, as well as the ultimate destination unit, in the header of a message. Brownrigg, 14:5-22, 23-44. Haff again w s included for disclosing a communication system in which serial numbers of communication units are tracked and used as part of a unit’s unique address. Haff, 10: 27-39; 11: 65- 12:14; 36: 23-34.Application/Control Number: 90/019,009 Page 10 Art Unit: 3992 Both Brownrigg and Haff were included for limitations that were not parts of the noted allowable features; as such, any plausible combination of valid prior art references including Ahuja and Haartsen also raises an SNQ for claims 16 and 17. Ahuja and Haartsen combined with Brownrigg and Haff provide a new technical teaching, that was not present during the original prosecution as to claims 16 and 17. Accordingly, a reasonable examiner would have found the indicated combinations, important in considering the patentability of claims 16 and 17. A substantial new question of patentability is raised by the references. None of the cited references, Ahuja, Haartsen, Brownrigg, or Haff, was of the record The teachings of Ahuja and Haartsen combined with Brownrigg and Haff as discussed in the Request are not cumulative to any written discussion on the record of the teachings of the prior art, were not previously considered nor addressed during a prior examination, and the same question was not the subject of a final holding of invalidity in the Federal Courts. It is noted that since the combination of Ahuja and Haartsen raises an SNQ for independent claims 1, 7 and 16, i.e. SNQ 1, any plausible combination of valid prior art references including Ahuja and Haartsen also raises an SNQ.Application/Control Number: 90/019,009 Page 11 Art Unit: 3992 Conelusion Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a 5 US. reexamination proceeding. Additionally 305 requires that ex parte reexamination proceedings "will be conducted with special dispatch” (37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c). The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the *569 patent throughout the course of this reexamination proceeding, See MPEP §§ 2207, 2282 and 2286. The third party requester is larly apprised of the ability to disclose such proceedings All correspondence relating to this ex parte reexam proceeding should be directed as follows: By US. Postal Service Mail to: Mail Stop Ex Parte Reexam ATTN: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 By FAX to: (571) 273-9900 Central Reexamination Unit By hand to: Customer Service Window Randolph Building 401 Dulany St. Alexandria, VA 22314 Registered users of EFS-Web may alternatively submit correspondence via the electronic filing system at https://efs.uspto.gov/efile/myportal/efs-registeredApplication/Control Number: 90/019,009 Page 12 Art Unit: 3992 Any inquiry concerning this communication or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705. Signe /LINH M NGUYEN/ Primary Examiner, Art Unit 3992 Confer: /JAMES A MENEI : Primary Examiner, Art Unit 3992 /HETUL B PATEL/ Supervisory Patent Examiner, Art Unit 3992