`
`D TRADEMARK O FFICE
`
`UNITED STA TES DEPA-RTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addl-.ss: COMMJSSTONER FOR PATENTS
`P.O. Box 1450
`A.Jcxmulria. Virginia 22313-1450
`www .uspto.gov
`
`AP PLICATION NO.
`
`ISSUE DATE
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15100-.791
`
`05/14/2019
`
`102&9131
`
`EFACT.0J IC2
`
`4939
`
`20995
`
`7S90
`
`0412412019
`
`KNOBBE MARTENS OLSO & BEAR LLP
`2040 MAIN STREET
`FOUR1EE TH FLOOR
`IRVI E, CA 92614
`
`ISSUE NOTIFICATION
`
`The projected patent number and issue date are specified above.
`Determination of Patent Term Adjustment under 35 U.S.C.154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Tenn Adjustment is 331 day(s). Any patent to issue from the above-identified application will include
`an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`detennines Patent Te1m Adjustment is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEB site (http://pair.uspto.gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office
`of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments
`should be directed to the Application Assistance Unit (AAU) of the Office of Data Management (ODM) at
`(571)-272-4200.
`
`APPLICANT(s) (Please see PAIR \\'EB site http://pair.uspto.gov for additional applicants):
`
`EcoFaclor, Inc., Redwood City, CA;
`John Douglas Steinberg, Millbrae, CA;
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers h·emendous
`resources and advantages for those who invest and manufacture goods here. Through Select SA, our nation
`works to encourage and facilitate business investment. To learn more about why the USA is the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectUSA.gov.
`
`IRI03 (Rev. 10109)
`
`ecobee, IPR2021-01052
`Ex.1006, Page 1 of 479
`
`
`
`UNITED ST ATES PA TENT 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.usplo.gov
`
`N NO.
`APPLICATIO
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`TTORNEY DOCKET NO. CONFIRMATION NO.
`
`01/21/2016
`15/002,791
`
`
`
`John Douglas Steinberg
`
`EFACT.011C2 4939
`
`04/05/2019
`7590
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`
`FOURTEENTH FLOOR
`
`IRVINE, CA 92614
`
`EXAMINER
`
`OJHA,AJAY
`
`ART UNIT
`
`PAPER NUMBER
`
`2824
`
`INOTIFICATION
`
`DA TE DELIVERY MODE
`
`04/05/2019 ELECTRONIC
`
`
`
`
`
`
`
`NOTICE OF NON-COMPLIANT INFORMATION DISCLOSURE STATEMENT
`
`application fails toAn Information Disclosure Statement (IDS) filed f• Z •I 'i in the above-identified
`
`
`
`
`
`
`
`
`
`
`meet the requirements of 37 CFR 1.97(d) for the reason(s) specified below. Accordingly, the IDS will be
`
`
`but the information referred to therein has not been considered.
`P.laced in the file,
`
`
`The IDS is not compliant with 37 CFR 1.97(d) because:
`
`
`� The IDS lacks a statement as specified in 37 CFR 1.97(e).
`
`0 The IDS lacks the fee set forth in 37 CFR 1.17(p ).
`0 The IDS was filed after the issue fee was paid. Applicant may wish to consider filing a petition to
`
`
`
`
`
`
`withdraw the application from issue under 37 CFR 1.313(c) to have the IDS considered. See
`MPEP 1308.
`
`2-4200 or 1-888-786-0101
`
`
`A plication Assistance Unit
`Office of Data Management
`
`FORM PTOM327-B (Rev. 02108)
`
`ecobee, IPR2021-01052
`Ex.1006, Page 2 of 479
`
`
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`(Multiple sheets used when necessary)
`SHEET 1 OF 2
`
`Application No.
`Filing Date
`First Named Inventor
`Art Unit
`Examiner
`Attorney Docket No.
`
`15/002,791
`
`January 21, 2016
`
`John Douglas Steinberg
`
`2824
`
`Ojha, Ajay
`
`EFACT.011C2
`
`PTO/SB/08 Equivalent
`
`Examiner Cite
`No.
`Initials
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Document Number
`Number - Kind Code (if known)
`Example: 1,234,567 B1
`9,353,965
`
`U.S. PATENT DOCUMENTS
`Publication
`Date
`MM-DD-YYYY
`
`Name
`
`05/31/2016 Goyal et al.
`
`9,534,805
`
`01/03/2017 Matsuoka et al.
`
`Pages, Columns, Lines Where
`Relevant Passages or
`Relevant Figures Appear
`
`2007/0107450
`
`2010/0070234
`
`2011/0118857
`
`2012/0066168
`
`2014/0074300
`
`2014/0207292
`
`2015/0227846
`
`2015/0300892
`
`2015/0378373
`
`2016/0047565
`
`2016/0241538
`
`2016/0290672
`
`2017/0123391
`
`2017/0234562
`
`2017/0268797
`
`2017/0322530
`
`2017/0328777
`
`2018/0058711
`
`2018/024581 0
`
`2018/0259400
`
`2018/0313567
`
`2018/0321093
`
`05/17/2007 Sasao et al.
`
`03/18/2010 Steinberg et al.
`
`05/19/2011
`
`Bodnar
`
`03/15/2012
`
`Fadell et al.
`
`03/13/2014 Shilts et al.
`
`07/24/2014 Ramagem
`
`08/13/2015 Mercer et al.
`
`10/22/2015 Malhotra et al.
`
`12/31/2015 Sprinkle et al.
`
`02/18/2016 Robinson
`
`08/18/2016
`
`Khurana et al.
`
`10/06/2016 Arensmeier
`
`05/04/2017 Sinha et al.
`
`08/17/2017 Ribbich et al.
`
`09/21/2017 Mowris et al.
`
`11/09/2017 AI-Mohssen et al.
`
`11/16/2017
`
`Zeckendorf et al.
`
`03/01/2018
`
`Taplin
`
`08/30/2018
`
`Berka et al.
`
`09/13/2018 Steinberg et al.
`
`11/01/2018 Steinberg
`
`11/08/2018 Steinberg et al.
`
`NON PATENT LITERATURE DOCUMENTS
`
`Examiner Signature
`
`I Date Considered
`
`*Examiner: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not
`in conformance and not considered. Include copy of this form with next communication to applicant.
`
`T1
`
`- Place a check mark in this area when an English language Translation is attached.
`
`ecobee, IPR2021-01052
`Ex.1006, Page 3 of 479
`
`
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`(Multiple sheets used when necessary)
`SHEET 2 OF 2
`
`Application No.
`Filing Date
`First Named Inventor
`Art Unit
`Examiner
`Attorney Docket No.
`
`15/002,791
`
`January 21, 2016
`
`John Douglas Steinberg
`
`2824
`
`Ojha, Ajay
`
`EFACT.011C2
`
`PTO/SB/08 Equivalent
`
`Examiner Cite
`Initials
`No.
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the
`item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue
`number(s), publisher, city and/or country where published.
`25 Anonymous: "Process Control", Garfixia Software Architectures, August 31, 2008, Retrieved from the
`Internet: URL:http://www.dossier-andreas. neVsoftware architecture/ process_control. html, pages 1-1.
`
`T1
`
`26 Communication in European Application No. 11818805.1 dated October 11, 2018 (EFACT.013EP).
`
`30247716
`
`Examiner Signature
`
`I Date Considered
`
`*Examiner: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not
`in conformance and not considered. Include copy of this form with next communication to applicant.
`
`T1
`
`- Place a check mark in this area when an English language Translation is attached.
`
`ecobee, IPR2021-01052
`Ex.1006, Page 4 of 479
`
`
`
`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`15002791
`
`21-Jan-2016
`
`Title of Invention:
`
`SYSTEM AND METHOD FOR USING A WIRELESS DEVICE AS A SENSOR FOR AN
`ENERGY MANAGEMENT SYSTEM
`
`First Named Inventor/Applicant Name:
`
`John Douglas Steinberg
`
`Filer:
`
`John R. King/Amy Durrant
`
`Attorney Docket Number:
`
`EFACT.011C2
`
`Filed as Small Entity
`
`Filing Fees for Utility under 35 USC 111 (a)
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USO($)
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`UTILITY APPL ISSUE FEE
`
`2501
`
`1
`
`500
`
`500
`
`ecobee, IPR2021-01052
`Ex.1006, Page 5 of 479
`
`
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USO($)
`
`Extension-of-Time:
`
`Miscellaneous:
`
`Total in USO($)
`
`500
`
`ecobee, IPR2021-01052
`Ex.1006, Page 6 of 479
`
`
`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`35605185
`
`15002791
`
`International Application Number:
`
`Confirmation Number:
`
`4939
`
`Title of Invention:
`
`SYSTEM AND METHOD FOR USING A WIRELESS DEVICE AS A SENSOR FOR AN
`ENERGY MANAGEMENT SYSTEM
`
`First Named Inventor/Applicant Name:
`
`John Douglas Steinberg
`
`Customer Number:
`
`20995
`
`Filer:
`
`John R. King/Melissa Ramirez
`
`Filer Authorized By:
`
`John R. King
`
`Attorney Docket Number:
`
`EFACT.011C2
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`02-APR-2019
`
`21-JAN-2016
`
`16:07:26
`
`Application Type:
`
`Utility under 35 USC 111 (a)
`
`Payment information:
`
`Submitted with Payment
`
`Payment Type
`
`Payment was successfully received in RAM
`
`yes
`
`CARD
`
`$500
`
`RAM confirmation Number
`
`040319INTEFSW16080400
`
`Deposit Account
`
`Authorized User
`
`111410
`
`Melissa Ramirez
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`37 CFR 1.16 (National application filing, search, and examination fees)
`
`37 CFR 1.17 (Patent application and reexamination processing fees)
`
`ecobee, IPR2021-01052
`Ex.1006, Page 7 of 479
`
`
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size(Bytes}/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(if appl.)
`
`218219
`
`1
`
`Issue Fee Payment (PTO-85B)
`
`EFACT-011 C2_issuefee.pdf
`
`no
`
`1
`
`Warnings:
`
`Information:
`
`658a2c264ed3e007207c5c30f2df3b4a4963
`e2c3
`
`16465
`
`2
`
`Miscellaneous Incoming Letter
`
`EFACT-011 C2_comments.pdf
`
`no
`
`2
`
`Warnings:
`
`Information:
`
`5 7ad 1fc9d37 Sbb0087fb8c 4a5 df0909e5 Scd
`0179
`
`40185
`
`3
`
`EFACT-011 C2_IDS.pdf
`
`yes
`
`3
`
`4eba9d39f2ff86120f9462dce9f837d4d7ed
`dbde
`
`Multipart Description/PDF files in .zip description
`
`Document Description
`
`Start
`
`End
`
`Transmittal Letter
`
`Information Disclosure Statement (IDS) Form (SB08)
`
`Warnings:
`
`Information:
`
`1
`
`3
`
`1
`
`2
`
`249715
`
`4
`
`Non Patent Literature
`
`EFACT-011 C2_ref25.pdf
`
`no
`
`2
`
`Warnings:
`
`Information:
`
`3c72fa4d0b9ed7e83a4a26ab3eedd224540
`92569
`
`899813
`
`5
`
`Non Patent Literature
`
`EFACT-011 C2_ref26.pdf
`
`no
`
`11
`
`798e622cb23f112753b857f93305734637b
`61155
`
`Warnings:
`
`Information:
`
`ecobee, IPR2021-01052
`Ex.1006, Page 8 of 479
`
`
`
`6
`
`Fee Worksheet (5B06)
`
`fee-info.pdf
`
`no
`
`2
`
`c23 e 7 e694c 4a 7b6 7cfb 16f82 4a6346cbaefa
`2f37
`
`30308
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`1454705
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New AQQlications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`National Stage of an International AQQlication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT /DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`New International AQQlication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 O), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`ecobee, IPR2021-01052
`Ex.1006, Page 9 of 479
`
`
`
`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), by mail or fax, or via EFS--Web.
`By mail, send to: Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box l 450
`Alexandria, Virginia 22313-1450
`
`By fax, send to:
`
`(57 l )-273-2885
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use B!ock l for any change of address)
`
`JNSTRlJCTlONS: This form should be used for transmitting the ISSUE FEE and PlJBLJCA TIONFEE (if required). Blocks l through 5 should be completed where appropriate. AH
`further correspondence including the Patent, advance orders. and notification of rnaintenance fees will be mailed to the current correspondence address as indicated unless coITected
`below or directed otherwise in Block l, by (a) specifying a new coffespondence address; andior (b) indicating a separate '1FEE ADDRESS'' for maintenance fee notifkations.
`J'\Jote: A certificate of rrrn.iJh1g can only be used for dcnnestic n1aHings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`papers. Each additjonaJ paper, such as an assignn1ent or formaJ drawing, n1ust
`have its own certjficate of rru:dHng or transn1issfrJn
`Certificate of Mailing or Transmission
`1 hereby certify that this Fee(s) Transmittal is being deposhed with the United
`States Postal Service with sufficient postage for first clas.s mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being transmitted to
`the lJSPTO via EFS-Web or by facsimile lo (:571) 273-},885. on the da.te below.
`
`7590
`20995
`01/04i2019
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE, CA 92614
`
`(l'yped. or pnnted. narm:)
`
`(Slgna.ttffe)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/002,791
`
`0l/2112016
`
`John Douglas Steinberg
`
`EFACT.OllC2
`
`4939
`
`TITLE OF INVENTION: SYSTEM AND JviETHOD FOR USING A WIRELESS DEVICE AS A SENSOR FOR AN ENERGY MANAGEMENT SYSTEJvi
`
`APPLN.TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
`
`TOT AL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`SMALL
`
`$500
`
`$0.00
`
`S0.00
`
`$500
`
`04/04/2019
`
`EXAMINER
`
`OHM .. AJAY
`
`AJUUNJT
`
`CLASS-SUBCLASS
`
`2824
`
`700-276000
`
`l. Change of correspondence address or indication of '"Fee Address" (37
`CFR J.3631.
`~:J Change of co1Tespondence address ( or Change of Correspondence
`Address fonn_ PTO/SB/L!2) attached<
`[.J "Fee Address" indication (or "Fee Address" Indication form PTO/
`SB/47; Rev 03-09 or more recent) attached. Use of a Customer
`Number is required.
`J. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`
`2. For printing on the patent front page, list
`( l) The names of up to 3 registered patent attorney,
`or agents OR. alternatively.
`(2) The name of a single firm (having as a member a
`registered attorney or agent) and the narr1es of up to
`'.2 registered patent attorneys or agents. If no narne is
`listed, no name will be printed.
`
`Knobbe, Martens,
`2 Olson & Bear, LLP
`
`3 _______________ _
`
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appem on the patent. If an assignee is identified below, the document must have been previously
`recorded, or filed for recordation. as set forth in 37 CFR 3.11 and 37 CFR 3.8l(a). Completion of this form is NOT a snbstilute for filing an assignment.
`
`(A) NAME OF ASSIGNEE
`
`(B) RESIDENCE· (CITY and STATE OR COUNTRY)
`Redwood City, CA
`EcoFactor, Inc.
`Please check the appropriate as.signee category or categories (wilJ not be pdnted on the patent) : [] lndjvidual 00 Co1porath_1n or orher pdvate group enthy [] Government
`□Advance Order - # of Copies __________ _
`[.JPublication Fee (if required)
`~Is.sue Fee
`4a. Fees submitted:
`4h. l'v1ethod of Payment: ( Please first reapply any previously paid fee shown above)
`0 Enclosed check
`[~ Electronic Payment via EFS-Web
`Qt The Director is hereby authodzed to charge ti
`· T · d f
`
`[) Non-electronic payment by credit card (Attach form PTO-2038)
`any deficiency, or credit any overpayment to Deposit Account No. _ 11-141 0
`
`:5. Clurng~ in Entity Status (from status indicated above)
`[] Appljcant certifyjng n1icro entity status, See 37 CFR ] .~!9
`0 Applicant asserting small entity status. See 37 CFR l.27
`l.J Applicant changing to regular undiscounted fee status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/15A and 15B), issue
`fee payment in the mkro entity amount wilJ not be accepted at the risk of appJication abandonn1ent.
`NOTE: If the appHcation was previously under n1icro en thy status, checking this box V/ill be taken
`lo be a notification of loss of entitlement lo micro en lily status.
`NOTE:. Checking this box wili be taken to be a notification of loss of entitlement to small or micro
`entity status, as applicable.
`
`NOTE: This form must be signed in accorda,.'1ce with 37 CFR 1.31 and 1.33. See 37 CFR l.4 for signature requirements and certifications.
`Authorized Signature ___ /J_o_h_n_R_._K_in~g~/ ___________ _
`Dale ___ A~p_ri_l 2_,_2_0_1_9 _______ _
`John R. King
`Registration No. _3_4_,3_6_2 ___________ _
`Typed or printed name ________________________ _
`
`PTOL-85 Part B (08-18) Approved for use through 01/31/2020
`
`Page 2 of3
`0MB 0651-0033
`
`U.S. Patent and Trademark Office: lJ.S. DEPARTMENT OF COMJ'vlERCE
`
`ecobee, IPR2021-01052
`Ex.1006, Page 10 of 479
`
`
`
`EFACT.011 C2
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Inventor
`
`App. No.
`
`Filed
`
`For
`
`John Douglas Steinberg
`
`15/002,791
`
`January 21, 2016
`
`SYSTEM AND METHOD FOR USING A WIRELESS DEVICE
`AS A SENSOR FOR AN ENERGY MANAGEMENT SYSTEM
`
`Examiner
`
`Ajay Ojha
`
`Art Unit
`
`Cont. No.
`
`2824
`
`4939
`
`COMMENTS ON STATEMENT OF REASONS FOR ALLOWANCE
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the Statement of Reasons for Allowance in the Notice of
`
`Allowance mailed January 4, 2019, Applicant respectfully submits the following
`
`comments.
`
`Applicant respectfully disagrees with the Examiner's statement of reasons for
`
`allowance to the extent that the limitations recited by the Examiner are not present in all
`
`of the claims. Also, to the extent that there is any implication that the patentability of
`
`the claims rests on the recitation of a single feature, Applicant respectfully disagrees
`
`with the Examiner's Statement because it is the combination of features that makes the
`
`claims patentable.
`
`-1-
`
`ecobee, IPR2021-01052
`Ex.1006, Page 11 of 479
`
`
`
`Application No.: 15/002,791
`Filing Date:
`January 21, 2016
`
`Applicant submits that the claims of the present application are allowable
`
`because each of the claims recites a combination of features that are not taught or
`
`suggested by the prior art.
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By:/John R. King/
`John R. King
`Registration No. 34,362
`Attorney of Record
`Customer No. 20,995
`(949) 760-0404
`
`Dated: April 2, 2019
`
`30247574
`
`-2-
`
`ecobee, IPR2021-01052
`Ex.1006, Page 12 of 479
`
`
`
`Docket No.: EFACT.011 C2
`
`Customer No. 20,995
`
`INFORMATION DISCLOSURE STATEMENT
`
`First Inventor : John Douglas Steinberg
`
`App. No.
`
`15/002,791
`
`Filed
`
`For
`
`January 21, 2016
`
`SYSTEM AND METHOD FOR USING A WIRELESS DEVICE AS
`A SENSOR FOR AN ENERGY MANAGEMENT SYSTEM
`
`Examiner
`
`Ojha, Ajay
`
`Art Unit
`
`Cont. No.
`
`2824
`
`4939
`
`Mail Stop Issue Fee
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`References and Listing
`
`Pursuant to 37 CFR 1.56, an Information Disclosure Statement listing references is
`
`provided herewith. Copies of any listed foreign and non-patent literature references are being
`
`submitted.
`
`No Disclaimers
`
`To the extent that anything in the Information Disclosure Statement or the listed
`
`references could be construed as a disclaimer of any subject matter supported by the present
`
`application, Applicant hereby rescinds and retracts such disclaimer.
`
`Timing of Disclosure
`
`This Information Disclosure Statement is being filed after the mailing date of a final
`
`action or after the mailing date of a Notice of Allowance. Please place these references in the
`
`file in accordance with 37 CFR 1.97(i).
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`Dated: April 2, 2019
`
`30247920
`
`By:/John R. King/
`John R. King
`Registration No. 34,362
`Registered Practitioner
`Customer No. 20,995
`(949) 760-0404
`
`ecobee, IPR2021-01052
`Ex.1006, Page 13 of 479
`
`
`
`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
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`20995
`7590
`01/04/2019
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE, CA 92614
`
`EXAMINER
`
`OJHA,AJAY
`
`ART UNIT
`
`PAPER NUMBER
`
`2824
`
`DA TE MAILED: 01/04/2019
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/002,791
`
`01/21/2016
`
`John Douglas Steinberg
`
`EFACT.011C2
`
`4939
`
`TITLE OF INVENTION: SYSTEM AND METHOD FOR USING A WIRELESS DEVICE AS A SENSOR FOR AN ENERGY MANAGEMENT SYSTEM
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`SMALL
`
`$500
`
`$0.00
`
`$0.00
`
`$500
`
`04/04/2019
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE MAILING
`DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS STATUTORY PERIOD
`CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES NOT REFLECT A CREDIT
`FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS PREVIOUSLY BEEN PAID IN
`THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM WILL BE CONSIDERED A REQUEST
`TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
`entity status still applies.
`
`If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
`
`If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
`"Change in Entity Status (from status indicated above)".
`
`For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
`fees.
`
`II. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalent of Part B.
`
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to Mail
`Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Maintenance fees are due in utility patents issuing on applications filed on or after Dec. 12, 1980.
`It is patentee's responsibility to ensure timely payment of maintenance fees when due. More information is available at
`www .uspto.gov/PatentMaintenanceFees.
`
`Page 1 of 3
`
`PTOL-85 (Rev. 02/11)
`
`ecobee, IPR2021-01052
`Ex.1006, Page 14 of 479
`
`
`
`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), by mail or fax, or via EFS-Web.
`By mail, send to: Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`By fax, send to:
`
`(571)-273-2885
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1 for any change of address)
`
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks 1 through 5 should be completed where appropriate. All
`further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as indicated unless corrected
`below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for maintenance fee notifications.
`Note: A certificate of mailing can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`papers. Each additional paper, such as an assignment or formal drawing, must
`have its own certificate of mailing or transmission.
`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`States Postal Service with sufficient postage for first class mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being transmitted to
`the USPTO via EFS-Web or by facsimile to (571) 273-2885, on the date below.
`
`20995
`7590
`01/04/2019
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE, CA 92614
`
`(Typed or printed name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/002,791
`
`01/21/2016
`
`John Douglas Steinberg
`
`EFACT.011 C2
`
`4939
`
`TITLE OF INVENTION: SYSTEM AND METHOD FOR USING A WIRELESS DEVICE AS A SENSOR FOR AN ENERGY MANAGEMENT SYSTEM
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`SMALL
`
`$500
`
`$0.00
`
`$0.00
`
`$500
`
`04/04/2019
`
`EXAMINER
`
`OJHA, AJAY
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`2824
`
`700-276000
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`0 Change of correspondence address ( or Change of Correspondence
`Address form PTO/SB/122) attached.
`0 "Fee Address" indication (or "Fee Address" Indication form PTO/
`SB/47; Rev 03-09 or more recent) attached. Use of a Customer
`Number is required.
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`
`2. For printing on the patent front page, list
`( 1) The names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) The name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name will be printed.
`
`2 ______________ _
`
`3 ______________ _
`
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent. If an assignee is identified below, the document must have been previously
`recorded, or filed for recordation, as set forth in 37 CFR 3.11 and 37 CFR 3.8l(a). Completion of this form is NOT a substitute for filing an assignment.
`
`(A) NAME OF ASSIGNEE
`
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : 0 Individual O Corporation or other private group entity O Government
`□Issue Fee □Publication Fee (if required)
`□Advance Order - # of Copies _________ _
`4a. Fees submitted:
`4b. Method of Payment: (Please first reapply any previously paid fee shown above)
`0 Electronic Payment via EFS-Web
`0 Enclosed check
`0 Non-electronic payment by credit card (Attach form PTO-2038)
`0 The Director is hereby authorized to charge the required fee(s), any deficiency, or credit any overpayment to Deposit Account No. ____ _
`
`5. Change in Entity Status (from status indicated above)
`0 Applicant certifying micro entity status. See 37 CFR 1.29
`0 Applicant asserting small entity status. See 37 CFR 1.27
`0 Applicant changing to regular undiscounted fee status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/15A and 15B), issue
`fee payment in the micro entity amount will not be accepted at the risk of application abandonment.
`NOTE: If the application was previously under micro entity status, checking this box will be taken
`to be a notification of loss of entitlement to micro entity status.
`NOTE: Checking this box will be taken to be a notification of loss of entitlement to small or micro
`entity status, as applicable.
`
`NOTE: This form must be signed in accordance with 37 CFR 1.31 and 1.33. See 37 CFR 1.4 for signature requirements and certifications.
`
`Authorized Signature _______________________ _
`
`Date ____________________ _
`
`Typed or printed name ______________________ _
`
`Registration No. ________________ _
`
`PTOL-85 Part B (08-18) Approved for use through 01/31/2020
`
`Page 2 of3
`0MB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`ecobee, IPR2021-01052
`Ex.1006, Page 15 of 479
`
`
`
`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.
`
`15/002,791
`
`01/21/2016
`
`John Douglas Steinberg
`
`EFACT.011C2
`
`4939
`
`20995
`7590
`01/04/2019
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE, CA 92614
`
`EXAMINER
`
`OJHA.AJAY
`
`ART UNIT
`
`PAPER NUMBER
`
`2824
`
`DA TE MAILED: 01/04/2019
`
`Determination of Patent Term Adjustment under 35 U.S.C.154 (b)
`(Applications filed on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
`
`Section l(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i) to eliminate the requirement
`that the Office provide a patent term adjustment determination with the notice of allowance. See Revisions to Patent
`Term Adjustment, 78 Fed. Reg. 19416, 19417 (Apr. 1, 2013). Therefore, the Office is no longer providing an initial
`patent term adjustment determination with the notice of allowance. The Office will continue to provide a patent term
`adjustment determination with the Issue Notification Letter that is mailed to applicant approximately three weeks prior
`to the issue date of the patent, and will include the patent term adjustment on the patent. Any request for reconsideration
`of the patent term adjustment determination (or reinstatement of patent term adjustment) should follow the process
`outlined in 37 CFR 1.705.
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of the Office of Patent Publication at 1-(888)-786-0101 or (571 )-272-4200.
`
`PTOL-85 (Rev. 02/11)
`
`Page 3 of 3
`
`ecobee, IPR2021-01052
`Ex.1006, Page 16 of 479
`
`
`
`0MB Clearance and PRA Burden Statement for PTOL-85 Part B
`
`The Paperwork Reduction Act (PRA) of 1995 requires Federal agencies to obtain Office of Management and Budget
`approval before requesting most types of information from the public. When 0MB approves an agency request to
`collect information from the public, 0MB (i) provides a valid 0MB Control Number and expiration date for the
`agency to display on the instrument that will be used to collect the information and (ii) requires the agency to inform
`the public about the 0MB Control Number's legal significance in accordance with 5 CFR 1320.5(b).
`
`The information collected by PTOL-85 Part B is required by 37 CFR 1.311. The information is required to obtain
`or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is
`governed by 35