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 .
DETAILED ACTION
Priority
Acknowledgment is made of applicant's claim for domestic benefit based on provisional application 63/132,928 filed on December 31, 2020 and parent US Patent Application No. 17/208,553 filed on March 22, 2021 now patent 11,656,591, and US Parent Application 18/199,261 filed on May 18, 2023, now patent 11,971,692.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 17 of U.S. Patent No. 11,971,692. Although the claims at issue are not identical, they are not patentably distinct from each other because they are simple changes of a statutory category. A person of ordinary skill in the art would conclude that the invention defined in the claims at issue would have been an obvious variation of the invention defined in the claims of the U.S. Patent. Comparisons of claim 1 in the instant application are shown in the following table. A mapping of claims to those disclosed in the ‘692 Patent is as shown in the table; and all other claims could also be mapped to similar claims in the patent.
Instant Application: 18649,716
Patent 11,971,692
1. A method for virtually commissioning a building management system comprising:
installing a virtual building management system on a virtual server,
wherein the virtual server is communicatively connected to a building management system device installed at a building site;
receiving, at the virtual server, product installation data, wherein the product installation data corresponds to one or more products at the building site;
configuring the one or more products installed at the building site to be controlled by the virtual building management system on the virtual server; and
selectively transferring control of the one or more products installed at the building site from the virtual building management system hosted at on the virtual server to the building management system device installed at the building site, the building management system device comprising a network layer for communicating with the virtual server.
1. A method for virtually commissioning a building management system comprising:
installing a virtual building management system on a virtual server,
wherein the virtual server is communicatively connected to a building management system controller installed at a building site;
receiving, at the virtual server, product installation data, wherein the product installation data corresponds to one or more products at the building site;
configuring the one or more products installed at the building site to be controlled by the virtual building management system on the virtual server; and
selectively transferring control of the one or more products installed at the building site from the virtual building management system hosted by the virtual server to the building management system controller installed at the building site and from the building management system controller at the building site to the virtual building management system hosted on the virtual server.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 18 – 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 18 recites the limitation "an application engine" and “network automation engine panel.” These terms are not defined by the
claim, the specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised of the
meaning of these terms. The term ‘application engine’ is not listed or defined in the specification. The term "network automation engine panel” is listed in paragraphs 0023 and 0155, however, the specification does not describe a panel as related to the network automation engine. Claims 19 and 20 depend from claim 18 and therefore are also rejected under 35 U.S.C. 112(b). Appropriate action is required.
Claim Rejections - 35 USC § 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, 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.
Claims 18 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Frey (US PG Pub. No. 20170230930), herein “Frey” in view of Verberkt et al. (US PG Pub. No. 20190132329), herein “Verberkt.”
Regarding claim 18,
Frey teaches a system for virtual commissioning of a building management system, the system comprising: (Abstract: “A method and system for commissioning a building automation system for a building are disclosed.” Par. 0069: “This invention digitalizes the commissioning process…” Par. 0016 – commissioning a building management system or building automation system by way of a digital or virtual building model.)
a virtual server communicatively connected to a network automation engine panel (communication terminal device, MG) and a remote commissioning system; (Par. 0023: “According to a first embodiment, the assignment is carried out by an entry in a digital building model (computer model) of a server associated with the building automation system (BIM server). The building plan is advantageously part of a virtual or digital building model (BIM=Building Information Modeling) for the building.” Par. 0025: “According to a further embodiment, the entry in the digital building model is made offline, by a synchronization of the building plan stored in the mobile communication terminal device with the digital building model at specific times or after defined events. The building plan for the building may be transferred to the mobile communication terminal device e.g. by a download from the BIM server. The synchronization of the building plan stored in the mobile communication terminal device with the digital or virtual building model of the BIM server may be initiated automatically at specific times (e.g. every hour or overnight) or after defined events (e.g. when a specified number of code entries is reached), or it may be triggered manually.” Par. 0057.)
and a virtual building management system hosted on the virtual server, the virtual building management system comprising (Par. 0016: “…a server for the building automation system, which server is connected to the mobile communication terminal device by way of a wireless communication connection and comprises the digital building model for the building; wherein a device that is installed or due to be installed, and whose identification code has been read in, is assigned by a user input on the mobile communication terminal device to a location in the building plan and/or to other devices in the building plan that are installed or due to be installed, wherein the assignment is stored in the server of the building automation system and is realized by a corresponding entry in the digital building model.” Par. 0027: “According to a further embodiment, a device that is installed or due to be installed is entered in a local or online database (product catalog) and can be displayed on the display of the communication terminal device, and the assignment of said device that is installed or due to be installed to a location in the building plan and/or to other devices in the building plan that are installed or due to be installed is made by a manual selection by the operator.”)
Frey does not teach a database in the system that stores real-time data and an application engine. However, Verberkt does teach an application engine (Application module 130) and a database, wherein the database stores real time data related to one or more products installed at a building site. (Par. 0063: “Projects 170A is a database that stores and makes accessible data related to the created project hierarchies associated with a System 100A. This database is accessible via Cloud 115 to external entities such as the Building Server 100 and to cloud-based application modules such as System Intake Application Module 130, System Project Application Module 140 and System Map Application Module 160. Data 170B is a database that stores and makes accessible data related to energy usage that is gathered by the various sensic devices, as well as aggregated/analytic data related to space and resource usage. Analytics data may also be stored in other data repositories accessible to Data 170B, or prepared on the fly with data extracted from the Data 170B.”)
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the system that discloses a server for commissioning a building management or building automation system as in Frey with having a building server that may contain a virtual model to enable commissioning and a database that stores real-time sensing data as in Verberkt in order to provide big-data to infrastructures, the software and hardware structures and services, and to efficiently manage and efficiently retrieve data of various formats from diverse sources. (Par. 0063, last paragraph)
Regarding claim 19,
The previously cited reference(s) teach the limitations of claim 18 which claim 19 depends. Frey also teaches selectively transfer control of the one or more products installed at the building site from the virtual building management system hosted on the virtual server to a building management system controller installed at the building site and from the building management system controller at the building site to the virtual building management system hosted on the virtual server. (0031: “Other embodiments provide a computer program for commissioning a building automation system, said computer program comprising instructions for performing the disclosed method. The computer program may be loaded into the memory of the mobile communication terminal device via a wired or a wireless data transfer. A wireless data transfer is advantageously realized via a download of the program from the internet or from a control center, e.g. a building control center, or from a building management system to which the mobile communication terminal device is connected for data processing and communication purposes.” See paragraph 0030, 0032 - 0035 that describes the selection of transfer of control for products/devices either installed or to be installed in a server.)
Regarding claim 20,
The previously cited reference(s) teach the limitations of claim 18 which claim 19 depends. Frey also teaches that the one or more products are VAV boxes and the virtual building management system performs a test procedure on the VAV boxes. (Par. 0041: “A building automation or building management system GAS controls and monitors administrative and operative functions for a building, such as e.g. with regard to asset management, facility management, etc., but also with regard to access control. In particular, the operating state of infrastructure present in the building ( e.g. heating systems, ventilation systems, air conditioning systems, sensors, actors, actuators) is also monitored by the building automation system GAS and if necessary relevant service or maintenance activities are initiated.” Par. 0045: “In the event of a change to the room planning, the logical links between the installed building automation field devices are advantageously checked and possibly a new logical assignment is carried out.” See also a later sentence in paragraph 0041 that describes “evaluation” of field devices as part of the commissioning process.)
Examiner's Statement of Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
Clams 1 and 10 disclose a method and system of virtually commissioning a building management system. The claims detail installing a virtual building management system on a virtual server, wherein the virtual server is communicatively connected to a building management system device installed at a building site; receiving, at the virtual server, product installation data, wherein the product installation data corresponds to one or more products at the building site; configuring the one or more products installed at the building site to be controlled by the virtual building management system on the virtual server; and selectively transferring control of the one or more products installed at the building site from the virtual building management system hosted at on the virtual server to the building management system device installed at the building site, the building management system device comprising a network layer for communicating with the virtual server.
The claimed invention is distinguished over the following prior art:
Vangeel et al. (US PG Pub. No. 20160095192) teaches commissioning of building systems and/or building management system(s) wherein a centrally located server is part of the commissioning. (Par. 0220) Vangeel does not teach the details of 1 and 10 of a virtual server communicatively connected to a building management system device installed at a building site; receiving, at the virtual server, product installation data, wherein the product installation data corresponds to one or more products at the building site; configuring the one or more products installed at the building site to be controlled by the virtual building management system on the virtual server; and selectively transferring control of the one or more products installed at the building site from the virtual building management system hosted at on the virtual server.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAD G ERDMAN whose telephone number is (571)270-0177. The examiner can normally be reached Mon - Fri 7am - 3pm or 4pm EST..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth Lo can be reached at (571) 272-9774. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAD G ERDMAN/Primary Examiner, Art Unit 2116
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