Detailed Action
Notice of Pre-AIA or AIA status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This Final Office action is responsive to the communication filed under 37 C.F.R. § 1.111 on June 8, 2026 (hereafter “Response”). The amendments to the claims are acknowledged and have been entered.
Claims 1 and 3 are now amended.
Claim 6 is now canceled.
New claim 21 is now added.
Claims 1–5 and 7–21 are pending in the application, of which claims 10–20 are withdrawn from consideration.
Response to Arguments
The Examiner agrees that the Response on June 8, 2026 complies with the requirements of 37 C.F.R §§ 1.111 and 1.121.
The rejections of claims 3 and 6 under 35 U.S.C. § 112 are hereby withdrawn, responsive to the Applicant’s correction to claim 3 and cancellation of claim 6.
Claims 1–4, 6, and 7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2020/0311794 A1 (“High”). The rejection has been considered in light of the amendment and the Applicant’s remarks, but the Examiner is not persuaded to withdraw the rejection.
The Applicant contends that “High is concerned with electronic shelf labels for displaying information related to one or more physical products, such as items located on the shelf or in stock at a store, but fails to disclose for example a controller configured to obtain via the wireless interface one or more energy consumption key performance indicators of the building that are dependent on the current location of the digital sign in the building,” meaning High cannot anticipate amended claim 1. (Response 10). The Examiner respectfully disagrees.
As the Examiner already explained in the Non-Final Office Action (page 6, paragraphs 24–29), High does not need to disclose the non-functional “energy consumption” KPI content of the claimed invention, because such content lacks a functional relationship with the system that is claimed. “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art.” MPEP § 2112.02(subsection III.) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). In other words, when a claim recites descriptive content, the prior art only needs to disclose the functions that are claimed for the content, and not the underlying “message or meaning [conveyed] to a human reader independent of the intended computer system.” MPEP § 2111.05(subsection III.); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential).
In this case, claim 1 recites up to—and only—three functional relationships between the digital sign and the energy consumption KPIs, and High discloses all three of them: (1) the digital sign must obtain the energy consumption KPIs via the wireless interface (addressed above via the citation to High ¶ 32); (2) the energy consumption KPIs must depend upon the digital sign’s self-determination of its current location (location dependence addressed below via citation to High ¶ 14, and self-determination of location addressed above via citation to High ¶ 17); and (3) the digital sign must display the energy consumption KPIs that it obtained (addressed below via discussion of High ¶ 31).
Notably absent from the functionality in claim 1 is the concept of energy consumption itself. The sign isn’t displaying its own energy consumption, nor is the sign using the energy consumption KPIs to drive its functionality (e.g., dimming the light to save energy). It’s just displaying the data. Consequently, the printed matter doctrine tells us that the prior art only needs to disclose the function performed on the energy consumption KPI’s (i.e., merely displaying it), rather than its content. See MPEP § 2111.05.
Accordingly, High discloses this claim element at least because it discloses the necessary functional relationship between the energy consumption KPIs and the digital sign of displaying the data. Again, the above reasoning was asserted in the Non-Final Office Action, but the Applicant’s remarks do not address it. Therefore, the Examiner’s response is to continue asserting the printed matter doctrine in the rejections below.
For these reasons, the 35 U.S.C. § 102 rejection over High’s disclosure stands.
Claims 1 and 7–9 also stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2014/0279608 A1 (“Horst”). The Examiner has reconsidered the rejection in light of the Applicant’s remarks and amendment, but is not persuaded to withdraw the rejection.
The Applicant contends that because Horst is concerned with a LEED box, “there is no disclosure of for example a display on a display of, ‘one or more energy consumption key performance indicators of the building that are dependent on the current location of the digital sign in the building,’ or of a display on the display of, ‘a current value for each of the one or more energy consumption key performance indicators of the building that are attributable to a particular tenant space within the building,’ as recited in amended independent claim 1.” (Response 11–12).
The Examiner respectfully disagrees. Horst explicitly discloses that the LEED box is part of a digital sign, that displays, among other things, a LEED score “created based on one or more algorithms that reflect an actual LEED or other score as closely as possible,” including “[t]he use of energy in and related to the building.” Horst ¶¶ 31 and 34. This is clearly an identical disclosure of an energy consumption KPI.
Accordingly, the 35 U.S.C. § 102 rejection over Horst is maintained.
The addition of new claim 21 is acknowledged. The Examiner agrees that the prior art does not anticipate it, but there was prior art before the effective filing date of the claimed invention that renders claim 21 obvious. Accordingly, claim 21 is rejected on those grounds.
In view of the foregoing, the Applicant’s request for a notice of allowance (Response 13) is respectfully denied.
Claim Rejections – 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
I. High discloses claims 1–4, 6, and 7.
Claims 1–4, 6, and 7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2020/0311794 A1 (“High”).
Claim 1
High discloses:
A digital sign for use in a building, the digital sign comprising:
High discloses an “electronic shelf label (ESL) 102 disposed within a building.” High ¶ 24. The ESL 102 also operates within the context of a broader system 100 in the building (shown in FIG. 1), which will be discussed together with the relevant claim limitations.
a housing;
“FIG. 2 is a schematic diagram of an exemplary embodiment of the electronic shelf label 102 used in the system 100.” High ¶ 28. As shown in both FIGS. 1 and 2, all of the components of each ESL 102 are self-contained as a single device. High FIG. 2.
a display housed by the housing, wherein the display is viewable from outside of the housing;
“The electronic shelf label 102 can further include an electronic display 218,” which is meant to display information intended for public consumption (e.g., price of a product, discounts, merchandise descriptors, etc.). High ¶ 31.
a wireless interface that supports one or more wireless protocols;
“In some embodiments, the electronic shelf label 102 includes a first power level (FPL) communication module 211 and a second power level (SPL) communication module 212,” High ¶ 29, which, in some embodiments, may be implemented as “a single communication module that is configured to selectively transmit data/information at a single power level.” High ¶ 30.
Either way, “SPL communication module 212 is configured to transmit data at the lower power level using at least one of low level Wi-Fi, Bluetooth, low energy Bluetooth, near field communication (NFC), or RFID capabilities,” and “FPL communication module 211 is configured to receive signals at a first power level via wireless communication 106 transmitted from the computing system 104 and/or transmit signals at a first power level.” High ¶ 29.
a controller housed by the housing and operatively coupled to the display and the wireless interface, the controller configured to:
“The electronic shelf label 102 includes a microprocessor 202,” High ¶ 28, which, as shown in FIG. 2, is connected to both the display driver 220 and the FPL/SPL communication modules 211, 212 via a single bus line. See also High ¶¶ 31–32 (describing how the microprocessor 202 controls each of the aforementioned modules).
identify a current location of the digital sign in the building;
“The electronic shelf label can execute a localization method to determine where the electronic shelf label is located within [a stored] 3D model [of the facility], and can associate the electronic shelf label with the electronic display device using the 3D model.” High ¶ 17.
obtain via the wireless interface one or more energy consumption key performance indicators of the building
“The microprocessor 202 of the shelf label 102 is configured to receive the data 205 from the computing system 104 to configure the electronic shelf label 102 to display particular information on the electronic display 218, such as a new price for a product associated with the electronic shelf label 102.” High ¶ 32. Other examples of the data include “a price per item of the product, a price per unit, a special offer, a number of items of the product in stock, an expected number of merchandise on a shelf, space management information, or an indicator field.” High ¶ 31.
Any of the foregoing examples fall within the scope of “energy consumption key performance indicators of the building” (hereafter “KPIs”) because, “[w]here the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art.” MPEP § 2112.02(subsection III.) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). In other words, when a claim recites descriptive content, the prior art only needs to disclose the functions that are claimed for the content, and not the underlying “message or meaning [conveyed] to a human reader independent of the intended computer system.” MPEP § 2111.05(subsection III.); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential).
In this case, claim 1 recites up to—and only—three functional relationships between the digital sign and the energy consumption KPIs, and High discloses all three of them:
(1) the digital sign must obtain the energy consumption KPIs via the wireless interface (addressed above via the citation to High ¶ 32);
(2) the energy consumption KPIs must depend upon the digital sign’s self-determination of its current location (location dependence addressed below via citation to High ¶ 14, and self-determination of location addressed above via citation to High ¶ 17); and
(3) the digital sign must display the energy consumption KPIs that it obtained (addressed below via discussion of High ¶ 31).
Notably absent from the functionality in claim 1 is the concept of energy consumption itself. The sign isn’t displaying its own energy consumption, nor is the sign using the energy consumption KPIs to drive its functionality (e.g., dimming the light to save energy). It’s just displaying the data. Consequently, the printed matter doctrine tells us that the prior art only needs to disclose the function performed on the energy consumption KPI’s (i.e., merely displaying it), rather than its content. See MPEP § 2111.05.
Accordingly, High discloses this claim element at least because it discloses the necessary functional relationship between the energy consumption KPIs and the digital sign of displaying the data.
that are dependent on the current location of the digital sign in the building;
“In some embodiments, the data received by one or more of the electronic shelf labels can be based on a location at which the one or more electronic shelf labels are disposed.” High ¶ 14.
and display on the display a current value for each of the one or more energy consumption key performance indicators of the building
“The electronic display 218 can display product information, stored in memory 204 as [the] data 205, in different fields of the electronic display 218.” High ¶ 31.
that are attributable to a particular tenant space within the building.
As mentioned above, “the data received by one or more of the electronic shelf labels” (and thus displayed by it, as also discussed above) “can be based on a location at which the one or more electronic shelf labels are disposed or will be disposed.” High ¶ 14. Thus, the data the electronic shelf labels displays is at least attributable to the particular space within the building, and to the extent the space must be a “tenant” space, the printed matter doctrine mentioned above still applies: there is no functional relationship in the claim concerning any landlord/tenant relationship concerning the particular space within the building.
Moreover, with respect to the claim language implying some kind of tenancy agreement or existence of a third party, “[c]laim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” MPEP § 2111.04. The existence of a correspondence between the sign’s location and a particular tenant, is clearly not an element of the claimed digital sign. Indeed, the Federal Circuit has “repeatedly distinguished a description of the environment in which a claimed invention operates from a limitation on the claimed invention itself.” Nazomi Communications, Inc., v. Nokia Corp., 739 F.3d 1339, 1345 (Fed Cir. 2014) (citing Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794-95 (Fed. Cir. 2010) and Advanced Software Design Corporation v. Fiserv, Inc., 641 F.3d 1368, 1375 (Fed. Cir. 2011)). The status of the sign’s location as “a particular tenant space” is merely a description of the environment in which the claimed digital sign operates, and therefore fails to limit the claim. The prior art need not disclose claim language that does not limit a claim.
Claim 2
High discloses digital sign of claim 1, wherein the controller is configured to
identify the current location of the digital sign in the building using an indoor positioning system associated with the building.
“The electronic shelf label can execute a localization method to determine where the electronic shelf label is located within [a stored] 3D model [of the facility], and can associate the electronic shelf label with the electronic display device using the 3D model.” High ¶ 17. High further discloses a few different ways to do this; for example, “[i]n some embodiments, the electronic shelf labels 102 wirelessly communicate 108 with the electronic display device 103 at a lower power level,” and this lower power level “reduces the range of the transmissions of the electronic shelf labels 102 such that each electronic shelf label 102 can communicate with the electronic display device 103 within range of the transmissions at the lower power level, but cannot communicate with electronic display devices outside the range of the transmissions at the lower power level.” High ¶ 27.
Claim 3
High discloses the digital sign of claim 2,
wherein the indoor positioning system comprises a plurality of wireless devices each positioned at a different location in the building, and wherein the wireless interface of the digital sign is configured to communicate with one or more in-range wireless devices of the plurality of wireless devices depending on the current location of the digital sign in the building,
“The SPL communication module 212 is configured to transmit signals at a lower power level via wireless communication 108 [with] the electronic display device 103 . . . using at least one of low level Wi-Fi, Bluetooth, low energy Bluetooth, near field communication (NFC), or RFID capabilities,” High ¶ 29, and as shown in FIG. 7, a plurality of electronic display devices 103a–103c may be positioned at different locations in the facility 700. High ¶ 45.
wherein the current location of the digital sign is identified based at least in part on an identity and location of the one or more in-range wireless devices.
Due to the use of the low power level Wi-Fi®, “each electronic shelf label 102 can communicate with the electronic display device 103 within range of the transmissions at the lower power level, but cannot communicate with electronic display devices outside the range of the transmissions at the lower power level.” High ¶ 27. Consequently, “the electronic shelf labels 102 can be selectively associated with the electronic display devices 103 to form a group.” High ¶ 45. “For example, electronic shelf label 102a, initially in a group associated with an electronic display device 103b, when moved from a location or area (e.g., based on coordinates) associated with the electronic display device 103b to a location or area (e.g., based on coordinates) associated with the electronic display device 103c, becomes part of a group associated with the electronic display device 103c.” High ¶ 45.
Claim 4
High discloses the digital sign of claim 1,
wherein the indoor positioning system comprises a plurality of beacons each positioned at a different location in the building, and wherein the wireless interface of the digital sign is configured to communicate with one or more in-range beacons of the plurality of beacons depending on the current location of the digital sign in the building,
“The SPL communication module 212 is configured to transmit signals at a lower power level via wireless communication 108 [with] the electronic display device 103 . . . using at least one of low level Wi-Fi, Bluetooth, low energy Bluetooth, near field communication (NFC), or RFID capabilities,” High ¶ 29, and as shown in FIG. 7, a plurality of electronic display devices 103a–103c may be positioned at different locations in the facility 700. High ¶ 45.
wherein the current location of the digital sign is identified based at least in part on an identity and location of the one or more in-range beacons.
Due to the use of the low power level Wi-Fi®, Bluetooth, BLE, NFC, or RFID, “each electronic shelf label 102 can communicate with the electronic display device 103 within range of the transmissions at the lower power level, but cannot communicate with electronic display devices outside the range of the transmissions at the lower power level.” High ¶ 27. Consequently, “the electronic shelf labels 102 can be selectively associated with the electronic display devices 103 to form a group.” High ¶ 45. “For example, electronic shelf label 102a, initially in a group associated with an electronic display device 103b, when moved from a location or area (e.g., based on coordinates) associated with the electronic display device 103b to a location or area (e.g., based on coordinates) associated with the electronic display device 103c, becomes part of a group associated with the electronic display device 103c.” High ¶ 45.
Claim 7
High discloses the digital sign of claim 1,
wherein the controller is configured to obtain the one or more key performance indicators of the building that are dependent on the current location of the digital sign in the building from a remote server.
“The microprocessor 202 of the shelf label 102 is configured to receive the data 205 from the computing system 104 to configure the electronic shelf label 102 to display particular information on the electronic display 218.” High ¶ 32. “The computing system 104 can be in wireless communication 106 with the electronic shelf labels 102. The computing system 104 transmits data via wireless communication 106 to the electronic shelf labels 102 and/or can be in wireless communication 110 with the electronic display device 108,” High ¶ 24, and thus falls within the scope of “remote.” Furthermore, as shown in FIG. 4, High labels computing system 104 as a “server.”
II. Horst discloses at least claims 1 and 7–9.
Claims 1 and 7–9 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2014/0279608 A1 (“Horst”).1
Claim 1
Horst discloses:
A digital sign for use in a building, the digital sign comprising:
Horst discloses a “dashboard device 24 and/or 26,” either one of which falls within the scope of the claimed invention. For brevity, this rejection will focus on the dashboard device 26 embodiment shown in FIGS. 6 and 22(a)–27(i), also known as a “LEED Dynamic Plaque™” (or “LDP”) 26, since it most closely aligns with the Applicant’s intended use of a public-facing sign within a building. See Horst ¶ 88. However, it should be understood that the claims are broad enough to also read on the embodiments of dashboard device 24 (shown in FIGS. 7–11) in which “[a]t least one of a mobile phone, a desktop computer, a laptop computer, a tablet computer, a personal data assistant (PDA) and a touchscreen device may be employed as the dashboard device.” Horst ¶ 40.
a housing;
“FIGS. 25(a), 25(b) and 25(c) show one embodiment of LDP 26 from top perspective, side and bottom perspective views,” including its “housing 31.” Horst ¶ 173.
a display housed by the housing, wherein the display is viewable from outside of the housing;
“In FIG. 25(a), a LEED logo 81 is initially displayed on display 27 of LDP 26. Housing 31 contains . . . display 27.” Horst ¶ 173.
a wireless interface that supports one or more wireless protocols;
“Any of devices 22, 24 and 26 may comprise one or more of . . . connectivity to a remote server over any viable communication channel like Wireless, Ethernet, Bluetooth, Cellular etc.” Horst ¶¶ 57–61. More specifically, housing 31 further contains a “hardware system 100,” Horst ¶ 173 (also illustrated as “110” in FIG. 23),2 with a “gigabit ethernet controller” providing the communication component. Horst FIG. 23.
a controller housed by the housing and operatively coupled to the display and the wireless interface,
“As shown in FIG. 23, and in one embodiment, LDP hardware system 110 includes a central processor 112, and a number of other hardware components that are configured to carry out the operation of LDP 26 (or dashboard 24) and its associated processor 112.” Horst ¶ 167. FIG. 23 further illustrates that that the display 27 and gigabit ethernet controller are each connected to the central processor 112.
the controller configured to:
“The following computer pseudo-code illustrates one embodiment of software configured to be loaded in and executed by LDP 26, and that is further configured to operate in conjunction with CWS 50. In particular, the pseudo-code shown below can be stored in a computer readable medium associated with LDP 26 for execution in processor 112 thereof (see FIG. 23), and used to execute the display of LEED building performance scores and/or other data and information on display 27.” Horst ¶ 147.
identify a current location of the digital sign in the building;
The broadest reasonable interpretation of “a current location of the digital sign in the building” includes simply identifying the location of the building, along with the mere presence of the digital sign within the building, without any further localization to a particular sub-area of the building, due to the presence of dependent claims that explicitly require a more precise location than the building itself (e.g., claims 3 and 5). See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”).
With that scope in mind, Horst explicitly discloses that “[a] unique IP address is preferably associated with the building or structure so that its location and other data associated therewith may be satisfactorily identified by the system.” Horst ¶ 31.
obtain via the wireless interface one or more energy consumption key performance indicators of the building that are dependent on the current location of the digital sign in the building;
“LDP 26 sends a request to [a server, “CWS 50”] for updated or new information concerning the performance scores associated with building or structure 1,” and “CWS 50 responds to the request from LDP 26 and sends authorized information to LDP 26 concerning the performance scores associated with the identified building or structure 1.” Horst ¶ 165. “A score is created based on one or more algorithms that reflect an actual LEED or other score as closely as possible,” such as “[t]he use of energy in and related to the building.” Horst ¶¶ 31 and 34.
and display on the display a current value for each of the one or more energy consumption key performance indicators of the building
“Upon receiving such performance scores through, for example, the internet 48, LDP 26 displays such scores on a screen or other user interface associated with or incorporated into LDP 26.” Horst ¶ 165.
that are attributable to a particular tenant space within the building.
“The methods and systems described herein create an ecosystem of input and feedback tools, and engage several basic types of stakeholders: the general public, owners, managers, users and building occupants.” Horst ¶ 37.
Claim 7
Horst discloses the digital sign of claim 1,
wherein the controller is configured to obtain the one or more key performance indicators of the building that are dependent on the current location of the digital sign in the building from a remote server.
“In one embodiment, such requests are sent via the internet 48 between LDP 26 located near or in building or structure 1 and remotely located CWS 50.” Horst ¶ 165. CWS 50 “is a cloud-hosted central server that collects data from devices 22, 24 and/or 26, and performs analysis on the data received therefrom. Such analyses include benchmark analysis using anonymous data from various devices 22, 24 and/or 26 in different builds or structures, which information can then be provided back to specific buildings about their performance relative to other buildings.” Horst ¶ 46. The acronym “CWS” stands for Central Web Server. See Horst ¶¶ 119–120.
Claim 8
Horst discloses the digital sign of claim 1,
wherein the current location of the digital sign corresponds to a particular tenant space of a plurality of tenant spaces in the building,
“Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure,” MPEP § 2111.04, and in this case, the existence of a correspondence between the sign’s location and a particular tenant, let alone “a plurality of tenant spaces in the building” that aren’t even the particular tenant space, are clearly not elements of the claimed digital sign.
Indeed, the Federal Circuit has “repeatedly distinguished a description of the environment in which a claimed invention operates from a limitation on the claimed invention itself.” Nazomi Communications, Inc., v. Nokia Corp., 739 F.3d 1339, 1345 (Fed Cir. 2014) (citing Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794-95 (Fed. Cir. 2010) and Advanced Software Design Corporation v. Fiserv, Inc., 641 F.3d 1368, 1375 (Fed. Cir. 2011)). In this case, the existence of “a particular tenant space of a plurality of tenant spaces in the building” is merely a description of the environment in which the claimed digital sign operates, and therefore fails to limit the claim. The prior art need not disclose claim language that does not limit a claim.
and wherein the one or more key performance indicators that are displayed on the display include one or more of:
The Examiner observes that all three claimed KPIs use the format of “a reduction in [the KPI] relative to a baseline,” and notes that there are at least two ways to interpret this phrasing. Under a narrow interpretation, the KPI must depict a representation of the true arithmetical difference (e.g., if the measurement drops from 55 to 50 units, then a representation of 5 units must be depicted). Under a broad interpretation, it is sufficient if the KPI is simply an update of a prior, higher measurement (e.g., if the measurement drops from 55 to 50 units, then a representation of 50 units may be depicted) because the updated version of the KPI, assuming it was a reduction, is still a reduction that is “relative to” the prior measurement.
In the instant case, among the three alternative KPIs listed in claim, Horst discloses the broad version for two of those alternatives (energy consumption and carbon footprint), and further discloses the narrow version for at least one of the alternatives (energy consumption).
a reduction in energy consumption of the particular tenant space relative to a baseline energy consumption for the particular tenant space;
Narrow interpretation: “Plaque 26 can be configured to display a LEED score and the latest level of certification corresponding to the building or structure,” Horst ¶ 88, and the score may be based on “trends of energy use,” with credit in the score given for “energy reduction changes occurring over time.” Horst ¶ 112. In other words, per the narrow interpretation, plaque 26 displays a score that describes the actual change, rather than merely the updated measurement.
Broad interpretation: “[T]he process of requesting and providing performance scores” mentioned in the rejection of claim 1 “is repeated, which in one embodiment is carried out according to a predetermined schedule (e.g., weekly, daily, hourly, every 10 minutes, etc.),” resulting in an updated version of the performance scores being displayed during the second iteration of step 105 in method 100. Horst ¶ 165. The aforementioned performance scores include an “energy score” that is calculated based on “energy used” in the building. Horst ¶ 103.
a reduction in energy costs associated with the particular tenant space relative to a baseline energy cost for the particular tenant space;
Horst does not further disclose separately monitoring energy costs (i.e., in addition to energy consumption), but claim 8 only requires a showing of “one or more” of the three alternatives recited in the claim.
and a reduction in carbon footprint associated with the particular tenant space relative to a baseline carbon footprint for the particular tenant space.
Broad interpretation: “[T]he process of requesting and providing performance scores” mentioned in the rejection of claim 1 “is repeated, which in one embodiment is carried out according to a predetermined schedule (e.g., weekly, daily, hourly, every 10 minutes, etc.),” resulting in an updated version of the performance scores being displayed during the second iteration of step 105 in method 100. Horst ¶ 165. The aforementioned performance scores include “carbon dioxide equivalents associated with the commuting methods, and carbon dioxide equivalents associated with the commuting distances” to the building where the sign is located. Horst ¶ 43.
Claim 9
Horst discloses the digital sign of claim 1,
wherein the current location of the digital sign corresponds to a particular tenant space of a plurality of tenant spaces in the building, and
“Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure,” MPEP § 2111.04, and in this case, the existence of a correspondence between the sign’s location and a particular tenant, let alone “a plurality of tenant spaces in the building” that aren’t even the particular tenant space, are clearly not elements of the claimed digital sign.
Indeed, the Federal Circuit has “repeatedly distinguished a description of the environment in which a claimed invention operates from a limitation on the claimed invention itself.” Nazomi Communications, Inc., v. Nokia Corp., 739 F.3d 1339, 1345 (Fed Cir. 2014) (citing Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794-95 (Fed. Cir. 2010) and Advanced Software Design Corporation v. Fiserv, Inc., 641 F.3d 1368, 1375 (Fed. Cir. 2011)). In this case, the existence of “a particular tenant space of a plurality of tenant spaces in the building” is merely a description of the environment in which the claimed digital sign operates, and therefore fails to limit the claim. The prior art need not disclose claim language that does not limit a claim.
wherein the one or more key performance indicators that are displayed on the display include one or more of:
a current occupancy count of the particular tenant space; and a healthy building score for the particular tenant space, wherein the healthy building score is dependent on one or more of the current occupancy count of the particular tenant space, one or more current air quality parameters associated with the particular tenant space, and one or more current behaviors of occupants of the particular tenant space.
“By way of example, at least one of indoor air quality, carbon dioxide levels, occupancy rates, occupant satisfaction, and absentee rates may be included in the human experience data when determining the score. At least one of commuting methods, commuting distances, and carbon dioxide equivalents associated with the commuting methods, and carbon dioxide equivalents associated with the commuting distances may be included in the transportation data when determining the score. At least one of water use in the building or structure space, water use for equipment located in the building or structure, water use in cooling towers associated with the building or structure, and irrigation associated with the building or structure may be included in the water data when determining the score.” Horst ¶ 43.
“Upon receiving such performance scores through, for example, the internet 48, LDP 26 displays such scores on a screen or other user interface associated with or incorporated into LDP 26.” Horst ¶ 165.
Claim Rejections – 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
I. High and Geng teach claim 5.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over High as applied to claim 4 above, and further in view of U.S. Patent Application Publication No. 2016/0295376 A1 (“Geng”).
Claim 5
High teaches the digital sign of claim 4,
wherein the controller is configured to receive a signal strength from each of the in-range beacons, and wherein
Due to the use of the low power level Wi-Fi®, Bluetooth, BLE, NFC, or RFID, “each electronic shelf label 102 can communicate with the electronic display device 103 within range of the transmissions at the lower power level, but cannot communicate with electronic display devices outside the range of the transmissions at the lower power level.” High ¶ 27. Consequently, “the electronic shelf labels 102 can be selectively associated with the electronic display devices 103 to form a group.” High ¶ 45. “For example, electronic shelf label 102a, initially in a group associated with an electronic display device 103b, when moved from a location or area (e.g., based on coordinates) associated with the electronic display device 103b to a location or area (e.g., based on coordinates) associated with the electronic display device 103c, becomes part of a group associated with the electronic display device 103c.” High ¶ 45.
High does not appear to explicitly disclose using triangulation to determine the current location of its electronic shelf labels 102.
Geng, however, teaches an enhancement technique for High’s electronic shelf labels 102, characterized by the following:
wherein the controller is configured to receive a signal strength from each of the in-range beacons,
“In the method, the received signals from the beacons may be converted into estimated distance (802) based on beacon information (e.g. type of beacons, location of the beacons, environment),” based on a received signal strength indicator (“RSSI”). Geng ¶ 35.
and wherein the controller is configured to triangulate the current location of the digital sign in the building based on the signal strength from each of the in-range beacons and the location of each of the in-range beacons.
“Once the receiver distance from each beacon is estimated, a geometric calculation 804-812 may be performed to obtain the best location estimate. As shown, the method may determine the number of beacons heard by the BLE enabled object and use different methods to determine location,” including a “trilateration process 808” in cases where there are “more than two beacon signals.” Geng ¶ 35.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve High’s electronic shelf labels 102 with Geng’s method for improving the real time location of a device in the same type of environment. One would have been motivated to improve High’s electronic shelf labels 102 with Geng’s method because the method used in High alone (i.e., location based on only the closest wireless node) is vulnerable to “obstruction, multiple-path, fading etc.” in “a complex indoor environment,” thus necessitating Geng’s method “to detect and minimize the noises, and combine with additional information to intelligently determine the location of an object in the complex indoor environment.” Geng ¶ 4.
II. High and Wilde teach claim 21.
Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over High as applied to claim 1 above, and further in view of U.S. Patent Application Publication No. 2016/0027399 A1 (“Wilde”).
Claim 21
High teaches the digital sign of claim 1, wherein the controller is further configured to:
receive at the controller the registration code entered by the user into the display device; and after receiving the registration code at the controller, display on the display device a predefined digital sign template including a display of the current value for each of the one or more energy consumption key performance indicators of the building that are attributable to the particular tenant space within the building.
“In some embodiments, the electronic shelf labels may be manual programmed by an employee, whereby the electronic shelf labels wirelessly communicate with the electronic display device or the employee triggers an association by selecting an input (and/or entering a code) on the electronic shelf label and selecting a specified input (and/or entering a code) on the electronic display device.” High ¶ 23.
High does not explicitly disclose that the code is initially sent by the electronic shelf label to the user; in High, the user simply enters the code on both devices that he wishes to pair with one another.
Russell, however, teaches a kiosk 700 with controller in which the kiosk initiates the pairing process, its controller configured to:
send a registration code to a user associated with the particular tenant space;
“At 810, a customer enters a mobile phone number into the Bitcoin kiosk/ATM device 700 via the touch screen display 730 or other interface. At 815, the system generates and transmits to the customer's mobile phone a SMS or text message including a random code.” Russell col. 8 ll. 17–22.
receive at the controller the registration code entered by the user into the display device;
“At 820, the Bitcoin kiosk/ATM device 700 then prompts the customer to enter the code in the text message.” Russell col. 8 ll. 22–25.
and after receiving the registration code at the controller, display on the display device a predefined digital sign template including a display of the current value for each of the one or more energy consumption key performance indicators of the building that are attributable to the particular tenant space within the building.
“At 825, it is determined if the entered code matches the code sent as part of the text message.” Russell col. 8 ll. 30–35. Thus, the user is now authorized to control the kiosk.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve High’s electronic sign display with Russell’s out of band authentication technique. One would have been motivated to improve High with Russell’s technique, because Russell’s technique enhances the security of the operation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Justin R. Blaufeld whose telephone number is (571)272-4372. The examiner can normally be reached M-F 9:00am - 4:00pm ET.
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Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/Primary Examiner, Art Unit 2151
1 In this rejection, quotations of Horst’s disclosure incorporate amendments that the Horst applicant submitted during prosecution to correct typographical errors in the published specification. A copy of those amendments are available in Horst’s file wrapper, Application No. 14/213,990, via USPTO Patent Center.
2 Reference numeral “100” appears to be a typographical error for “110,” as Horst refers to those reference numerals interchangeably with respect to the LDP hardware system 100/110 shown in FIG. 23. See Horst ¶¶ 167–168.
Prosecution Insights