Eric Alden. Rumer et al.

Patent Trials and Appeals Board

Mar 25, 2020

13679495 - (D) (P.T.A.B. Mar. 25, 2020)

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.
13/679,495 11/16/2012 Eric Alden Rumer 0426-US-01 9826
83579 7590 03/25/2020
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
EXAMINER
MACASIANO, JOANNE GONZALES
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
03/25/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC ALDEN RUMER and KEN RUMER
Appeal 2018-006822
Application 13/679,495
Technology Center 2100
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Level 3 Communications,
LLC, appeals from the Examiner’s decision rejecting claims 1–20, which are
all claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Level 3
Communications, LLC. Appeal Br. 3.
Appeal 2018-006822
Application 13/679,495

2
STATEMENT OF THE CASE2
Appellant’s disclosed embodiments and claimed invention “relate to
provisioning and providing computing resources, and in particular, the
automatic provisioning of various computing resources of a computing
environment.” Spec. ¶ 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
Exemplary Claims
1. A method for providing a computing environment
as a service comprising:
initiating, using at least one processor, an instance of a
service comprising source code being developed, the service
corresponding to a first computing environment;
configuring, using the at least one processor, a plurality
of resources of the service based on configuration information,
the plurality of resources including at least one of a database
and an application server; and
promoting, using the at least one processor, the plurality
of resources and the source code to a second computing
environment.

2 Our decision relies upon Appellant’s Appeal Brief (“Br.,” filed
Jan. 30, 2017); Examiner’s Answer (“Ans.,” mailed Jan. 12, 2018); Final
Office Action (“Final Act.,” mailed Aug. 26, 2016); and the original
Specification (“Spec.,” filed Nov. 16, 2012). Appellant did not file a Reply
Brief in response to the factual findings and legal conclusions in the
Examiner’s Answer.
Appeal 2018-006822
Application 13/679,495

3
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Kampas et al. (“Kampas”) US 2012/0124211 A1 May 17, 2012
Watters et al. (“Watters”) US 2013/0174124 A1 July 4, 2013
Rejections on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Watters and Kampas. Final Act. 2.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 10–15) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
obviousness rejection of claims 1–20 on the basis of representative claim 1.3
ISSUE
Appellant argues (Br. 10–14) the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Watters
and Kampas is in error. These contentions present us with the following
issue:

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appeal 2018-006822
Application 13/679,495

4
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for providing a computing environment as a
service” that includes, inter alia, the step of “promoting, using the at least
one processor, the plurality of resources and the source code to a second
computing environment,” as recited in claim 1?
PRINCIPLES OF LAW
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
The relevant inquiry is whether the Examiner has set forth “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007)).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
Appeal 2018-006822
Application 13/679,495

5
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
The Examiner finds Kampas at paragraphs 46 and 65 teaches or
suggests the disputed “promoting” limitation. Final Act. 4 (citing Kampas
¶ 46 for its deployment of a software service, and ¶ 65 for its teaching of
using a configuration derived during operation 605 to implement a
provisioned environment). The Examiner finds, “provisioning the resources
to the cross-platform environment is promoting the resources to the second
computing environment.” Id.
In response,
Appellant respectfully traverses the rejection at least because
Kampas also does not disclose “promoting, using the at least
Appeal 2018-006822
Application 13/679,495

6
one processor, the plurality of resources . . . to a second
computing environment.” In particular, the Office Action cites
paragraphs 0046 and 0065 of Kampas to suggest that Kampas
discloses “promoting, using the at least one processor, the
plurality of resources . . . to a second computing environment.”
Br. 11. Appellant further argues, “[f]ramework 100 of Kampas is not, itself,
a ‘first computing environment’ in which an ‘instance of a service
comprising source code being developed’ is ‘initiated,’ as set forth in
claim 1. Rather, framework 100 of Kampas is a configuration tool.
Accordingly, the framework 100 in Kampas cannot be considered a ‘first
computing environment,’ as claimed in claim 1.” Br. 12.
In response to Appellant’s argument, the Examiner takes a broad but
reasonable interpretation (see Morris, 127 F.3d at 1054) of the disputed
“promoting” step by noting “Appellant has defined ‘promoting’ in their
Specification” in paragraphs 37, 40, and 43 (Ans. 4–5) and, “[a]s such the
Examiner contends that it is clear from the Appellant’s specification that the
term ‘promote’ is interchangeably used with terms such as ‘transmit’,
‘deploy’, and ‘transfer’.” Ans. 5. “[I]n view of the above discussion
[regarding paragraphs 46 and 65 of the Kampas reference, cited for teaching
or suggesting the disputed ‘promoting’ limitation], the Examiner maintains
that the provisioning and deploying operations disclosed in the Kampas
reference are equivalent to the promotion operation recited in Claim 1,
particularly since provisioning is well-known to include at least one of
‘deploy, send, transmit, copy and transmit, promote and/or otherwise
provide’ as [disclosed] in Paragraph [0040] of the . . . specification.” Ans. 6.
Appeal 2018-006822
Application 13/679,495

7
The Examiner further finds
a process of deploying software, i.e. promoting code, was
taught in the Watters reference, see Paragraphs [0074] and
[0075] as cited in the outstanding rejection, and as such the
recitations of provisioning and deploying resources disclosed in
Kampas are to be viewed in light of the Watters reference
disclosure, as it is well-known that the process of deploying
software routinely includes the resources necessary to support
the operation of said software, as this would simplify the
process of deploying fully functional software.
Ans. 6.
We agree with the Examiner’s findings and are not persuaded by
Appellant’s arguments that Kampas does not disclose “promoting, using the
at least one processor, the plurality of resources . . . to a second computing
environment.”
Appellant also contends the Examiner “has provided no statement
why it would have been obvious in light of the references to combine
Watters and Kampas [to] promote both the source code and the resources of
the service, and any such statement would necessarily be the result of
impermissible hindsight. As such, the Office Action has not met its prima
facie burden to prove obviousness for at least this additional reason.”
Appeal Br. 14. We disagree.
We disagree because, in compliance with KSR, we find the Examiner
did provide a statement concerning motivation to combine Watters with
Kampas, specifically, that “[i]t would have been obvious at the time the
invention was made to a person having ordinary skill in the art to have
modified the method as disclosed by Watters with the configuration
information as taught by Kampas for purposes of ‘improving a data center’s
Appeal 2018-006822
Application 13/679,495

8
ability to execute operations quickly under standardized protocols and with
consistent quality of service.’” Final Act. 4 (citing Kampas ¶ 9).
With respect to establishing a prima facie case, the Federal Circuit has
repeatedly noted that “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The Examiner satisfies the burden of establishing a
prima facie case under 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. See In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). If the Examiner “adequately explain[s] the
shortcomings . . . the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument.” Hyatt, 492 F.3d at 1370.
We are not persuaded by Appellant’s argument that the Examiner
failed to make a prima facie case of obviousness. First, as explained in In re
McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of Appellant’s invention and does not include
knowledge gleaned only from Appellant’s disclosure.
Appeal 2018-006822
Application 13/679,495

9
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Final Act. 2–4.
To the extent that the Examiner relies on the knowledge of one of ordinary
skill in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit. See In re Kahn, 441 F.3d 977, 988
(C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must
be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness”). As our
precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.
KSR, 550 U.S. at 418.
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings supported by the
references of record. See Final Act. 2–4; Ans. 3–6. Thus, we agree with the
Examiner’s factual findings and legal conclusions.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
Appeal 2018-006822
Application 13/679,495

10
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 2–20 which fall therewith. See
Claim Grouping, supra.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1–20 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–20 103(a) Obviousness Watters, Kampas 1–20
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED