Ex Parte Durham et al

Patent Trial and Appeal Board

Mar 11, 2016

12911832 (P.T.A.B. Mar. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/911,832 10/26/2010
127893 7590 03/11/2016
Streets & Steele - Lenovo (Singapore) Pte, Ltd,
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
FIRST NAMED INVENTOR
Pamela C. Durham
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
XRPS920100098US 1 1963
EXAMINER
WON, MICHAEL YOUNG
ART UNIT PAPER NUMBER
2449
MAILDATE DELIVERY MODE
03/11/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAMELA C. DURHAM, NILS PETER JOACHIM HANSSON,
EDWARD S. SUFFERN, and JAMES L. WOOLDRIDGE
Appeal2014-002094
Application 12/911,832
Technology Center 2400
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 16-30, which are the only pending claims. Br. 2. 1
Claims 1-15 have been canceled. July 5, 2012 Preliminary Amendment 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. Additionally, pursuant to 37 C.F.R. § 41.50(b), we enter a
new ground of rejection.
1 Throughout this opinion, we refer to (1) the Final Rejection (Final Act.)
mailed May 17, 2013; (2) the Appeal Brief (Br.) filed August 21, 2013, and
(3) the Examiner's Answer (Ans.) mailed September 16, 2013.
Appeal2014-002094
Application 12/911,832
INVENTION
Appellants' invention manages system resources in a virtual-machine
environment. Spec. i-f 1. Claim 16 is reproduced below:
Smith
16. A computer program product including computer
usable program code embodied on a tangible computer usable
medium, the computer program product including:
computer useable program code for monitoring network
traffic among virtual machines that are allocated to a plurality
of compute nodes on a network;
computer useable program code for identifying first and
second virtual machines having inter-virtual machine
communication over the network in an amount that is greater
than a threshold amount of the network traffic; and
computer useable program code for migrating at least one
of the first and second virtual machines so that the first and
second virtual machines are allocated to the same compute node
and the inter-virtual machine communication between the first
and second virtual machines is no longer directed over the
network.
The Examiner relies on the following as evidence of unpatentability:
US 8,102,781 B2 Jan.24,2012
(filed July 31, 2008)
THE REJECTIONS
Claims 16-30 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Ans. 2-3.
Claims 16-30 are rejected under 35 U.S.C. § 102(e) as anticipated by
Smith. Ans. 4--8.
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Application 12/911,832
THE § 101 REJECTION
In the Final Rejection, the Examiner rejected claims 16-30 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act.
2-3. The Examiner maintained the§ 101 rejection in the Examiner's
Answer. See Ans. 2-3. Although Appellants appeal from the last decision
of the Examiner (see Notice of Appeal, filed June 27, 2013), Appellants did
not argue the§ 101 rejection. See Br. 2-14.
Because claims 16-30 stand rejected under § 101 (id.), and because
Appellants' Brief does not contest the§ 101 rejection (see Br. 2-14), we
summarily sustain the rejection. See Hyatt v. Dudas, 551F.3d1307, 1314
(Fed. Cir. 2008) (explaining that when appellant fails to contest a ground of
rejection, the Board may affirm the rejection without considering its
substantive merits); see also 37 C.F.R. § 41.37(c)(l)(iv) and Manual of
Patent Examining Procedure (MPEP) § 1205.02, 9th ed. (Nov. 2015) ("If a
ground of rejection stated by the examiner is not addressed in the appellant's
brief, that ground of rejection will be summarily sustained by the Board.").2
2 Notably, whether the claim is directed to a signal or an abstract ideas are
different issues in the subject-matter-eligibility inquiry. See 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (Dec.
16, 2014); July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg.
45,429 (July 30, 2015). A transitory, propagating signal per se is not
patentable subject matter under 35 U.S.C. § 101 because it does not fall
within any of the four statutory categories of invention. In re Nuijten, 500
F.3d 1346, 1357 (Fed. Cir. 2007); see also MPEP § 2106(1). In contrast, a
claim may fall within one of the four statutory categories of invention but
may be directed to nothing more than an abstract idea-a judicial exception
to the four categories-not eligible for patent protection. MPEP § 2106(II).
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Appeal2014-002094
Application 12/911,832
THE REJECTION OVER SMITH
Claim 16
The Examiner finds that Smith discloses every recited element of
claim 16. Ans. 4--5. According to the Examiner, Smith's network parameter
is the recited amount of communication greater than a threshold. Id. at 4--5
(citing Smith col. I, 1. 62 to col. 2, 1. 3). The Examiner finds that Smith's
network parameter relates to traffic among virtual machines. Ans. 10.
Among other arguments, Appellants contend that Smith identifies the
load on a network device, not the recited amount of inter-virtual machine
communication. Id. at 9. According to Appellants, Smith merely teaches
code that identifies virtual machines that have no communication over the
network and tracks overall bandwidth or network traffic. Id. at 8-9 (citing
Smith, col. 1, 11. 38--40; col. 3, 11. 38--40; col. 4, 11. 12-16).
Issue
Under § 102, has the Examiner erred by finding that Smith discloses
computer program product having computer useable code for "identifying
first and second virtual machines having inter-virtual machine
communication over the network in an amount that is greater than a
threshold amount of the network traffic," as recited in claim 16?
Analysis
We agree with Appellants that Smith, as interpreted by the Examiner,
lacks the recited "code for identifying first and second virtual machines
having inter-virtual machine communication over the network in an amount
that is greater than" a network traffic threshold amount ("identifying
function") and does not anticipate claim 16. Br. 8-9.
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Application 12/911,832
In particular, the Examiner finds that the recited threshold corresponds
to Smith's threshold. Ans. 4--5 (citing Smith, col. 1, 1. 62 to col. 2, 1. 3).
Smith states that this threshold is used in step 54. See Smith, col. 4, 11. 60-
64, Fig. 3. Smith further states that this threshold is for "CPU [central
processing unit], memory, bandwidth, or other parameter[s], or combination
of parameters at the physical server." Id. For example, Smith compares a
particular server's overall bandwidth to a threshold. Id., col. 4, 1. 64 to
col. 5, 1. 3.
Smith lacks an example of comparing this threshold to Smith's traffic
matrix values in step 50 in Figure 2 or another value that represents inter-
virtual machine communications between a first and second virtual machine
over the network, as required to meet claim 16. Instead, Smith merely
discusses comparing traffic associated with a physical device (see id., col. 4,
1. 64 to col. 5, 1. 3; col. 1, 1. 62 to col. 2, 1. 3}-i.e., overall bandwidth-to a
threshold. Because this overall bandwidth merely represents aggregate
communications among virtual machines (see id., col. 4, 11. 26-36; Fig. 3,
step 52), we agree with Appellants (Br. 8) that the Examiner has not
established that Smith necessarily compares the traffic between a virtual-
machine pair and a threshold, as recited in the identifying function.
For the above reasons, Appellants have persuaded us of error in the
rejection of independent claim 16 and dependent claims for similar reasons.
New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
under 35 U.S.C. § 103(a) for claims 16-19, 21, and 24--30 as being obvious
over Smith. We deem the recited identifying function discussed above to be
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Application 12/911,832
obvious over Smith. Because our analysis deviates from the Examiner's
position and relies upon facts and reasoning that the Examiner did not use,
we designate the rejection as a new ground. See In re Stepan Co., 660 F.3d
1341, 1344--45 (Fed. Cir. 2011). Except to the extent we deviate from the
Examiner's findings and reasoning discussed below, we adopt the
Examiner's findings concerning Smith as our own. Ans. 4--8.
Independent Claim 16
I. "code for monitoring network traffic among virtual machines that are
allocated to a plurality of compute nodes on a networ~'
We are not persuaded that Smith lacks code for monitoring network
traffic among virtual machines that are allocated to a plurality of compute
nodes on a network. Br. 8. For example, Smith monitors bandwidth
between virtual machine A and each of the other virtual machines (e.g.,
B-E). Smith, col. 4, 11. 19-23, Fig. 4, cited in Ans. 10. In step 50, Smith
performs this monitoring for each of the system's virtual machines. Id.,
col. 4, 11. 2-3, 13-17, Fig. 3. That is, Smith monitors inter-virtual-machine
communications and records the communications in a traffic matrix. See id.,
Fig. 4. On this record, we agree with the Examiner that the monitoring in
step 50 corresponds to claim 1 's recited code for monitoring. Ans. 10.
In contrast to the Examiner's reliance on step 50 of Smith, Appellants
present arguments regarding the network device's load or overall bandwidth
that is collected in step 52. Br. 8-9. This separate step relates to monitoring
Smith's physical server availability. Smith, col. 4, 11. 26-27. But Smith
notes that the physical-server monitoring in step 52 is in addition to the
virtual-machine monitoring in step 50 that builds the traffic matrix. Id.,
col. 4, 11. 26-28. Because Smith's traffic matrix built in step 50 shows the
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Application 12/911,832
recited code for monitoring communication between and among individual
machines, we disagree with Appellants' argument that the network traffic
monitored by Smith could be from many sources and not just virtual
machines. Br. 8.
II. "code for identifying first and second virtual machines having inter-
virtual machine communication over the network in an amount that is
greater than a threshold amount of the network traffic"
As indicated above, Smith does not disclose the recite identifying
function above. This, however, is not the end of the inquiry under
obviousness. Although not discussed by the Examiner, Smith's particular
server's bandwidth (Smith, col. 4, 1. 64 to col. 5, 1. 3) could represent a first
and second virtual machines having inter-virtual machine communication
over the network, at least in certain instances.
For example, Smith's system could contain two physical servers that
respectively have only one virtual machine, each virtual machine
communicating with the other. See Br. 10 (discussing the possibility of a
network having only the first and second virtual machines). In this
configuration, the overall bandwidth for a particular server represents
communication between virtual machines. And like the recited code "for
identifying" in claim 16, Smith, therefore, suggests identifying inter-virtual-
machine communications over a network that exceed the recited threshold
amount of network traffic in this scenario. Id., col. 4, 1. 64 to col. 5, 1. 3.
Furthermore, Smith teaches that such a configuration described above
could have been arranged using known techniques and without changing
Smith's functionality. That is, virtualization allows movement of virtual
machines to different physical servers. See Smith, col. 1, 11. 24--29. Also,
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the reassignment of virtual machines does not change Smith's method
because the method is not dependent on any particular assignment of servers
to virtual machines. See id. (describing that a server provides continuous
service even if moved); id., col. 3, 11. 29-30 (disclosing that each machine
can be moved to another server).
Accordingly, regardless of whether expressly disclosed, it would have
been at least obvious for one of ordinary skill in the art to recognize that
situations exist in which Smith's disclosed arrangement would result in
Smith's code actually performing the identifying function in claim 16.
Doing so would have been nothing more than a combination of known prior
art elements with no change in their respective functions to obtain a
predictable result. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
III "code for migrating at least one of the first and second virtual machines
so that the first and second virtual machines are allocated
to the same compute node"
Lastly, regarding the "code for migrating" limitation, Appellants state
that the virtual machines "may be migrated ... without regard to whether a
network device has reached a predefined threshold." Id. (underlining
omitted). We agree. For example, claim 16 does not recite that migrating
the virtual machines is in response to any identification of a communication.
Nonetheless, the breadth of claim 16 does not preclude migration of a
virtual machine from occurring upon the threshold condition in the code for
performing the identifying function being met. We, thus, disagree that
Smith teaches away from the claimed invention merely because the
reference discusses migrating virtual machines based on a threshold. Br. 10.
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Application 12/911,832
Moreover, although a "teaching away" argument is irrelevant to an
anticipation rejection (see Leggett & Platt, Inc. v. VUTEK, Inc., 537 F.3d
1349, 1356 (Fed. Cir. 2008)), we address this contention in our analysis
because we reject claim 16 under a new ground based on obviousness.
Smith teaches migrating virtual machines at a predefined threshold.
Smith, col. 1, 1. 62 to col. 2, 1. 3 and col. 5, 1. 65 to col. 6, 1. 6. Thus, Smith
teaches migrating, as recited. Also, even if the claims required a condition
that triggers migration to be inter-virtual machine communication exceeding
a threshold (see Br. 10), as explained above, it would have been obvious to
arrange the virtual machines so that the overall bandwidth represents the
recited inter-virtual machine communication. Even under this condition,
then, claim 16 would have been obvious for the reasons discussed
previously.
For the foregoing reasons, we present a new ground of rejection for
independent claim 16 over Smith under 35 U.S.C. § 103.
Claim 17
Appellants argue that Smith lacks the recited management information
database of the network switch. Br. 11. The Examiner finds that Smith's
switches communicate with a management station. Ans. 12 (citing Smith,
col. 4, 11. 3-7; id., col. 3, 11. 22-24). The Examiner concludes that Smith's
management station inherently comprises databases to send and receive
information. Ans. 12.
The issue, then, is whether the Examiner's finding that Smith's
management station must comprise a database (id.) is reasonable.
We begin by construing the key disputed limitation, "management
information database." The Specification states that data is obtained from
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Application 12/911,832
"management information database," but the Specification does not provide
many details regarding the database or define the term. Spec. i-f 11. So, a
broad, but reasonable, interpretation encompasses any database storing
management information, including network performance.
Given this construction, the Examiner's position (Ans. 12) is
reasonable. In particular, Smith's edge switch must track bandwidth to
provide a traffic matrix. See Smith, col. 4, 11. 10-18. It is reasonable that
Smith's edge switch must store this performance information in a database
somewhere in order to carry out its function. On this record, the weight of
the evidence supports the Examiner's position. Ans. 12.
Nonetheless, given that we designated independent claim 16 a new
ground, we further find that databases to store management information are
known to those of ordinary skilled in the art. For example, Smith teaches, at
various passages, using databases to store network and traffic information.
Smith col. 4, 11. 51-53, col. 5, 11. 26-28.
We therefore reject claim 17.
Claim 18
The Examiner finds that Smith identifies the first and second virtual
machines using MAC (media access control) addresses. Ans. 5 (citing
Smith col. 3, 11. 38--40, col. 4, 11. 1-18). Appellants argue that Smith uses
the MAC address and VLAN (virtual local area network) pairs to track
overall communication, but not communication between the first and second
virtual machines. Br. 12.
As discussed in connection with claim 16, Appellants' argument is
undermined by Smith's traffic matrix showing communication between the
first and second virtual machines. See Smith, Fig. 4. In the sentence
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Application 12/911,832
following Appellants' citation, Smith states that bandwidth tracked using the
MAC addresses "provides a traffic matrix." Id., col. 4, 11. 16-18. The traffic
matrix represents inter-virtual-machine communication, as discussed
previously. See Smith, Fig. 4. So, when discussing "overall bandwidth" in
Smith (id., col. 4, 11. 14--15), one skilled in the art would have recognized
that Smith is referring to overall bandwidth for inter-virtual-machine
communication between the first and second virtual machines. See Smith,
col. 4, 11. 19-23, Fig. 4, cited in Ans. 10. On this record, we are unpersuaded
by Appellants' argument. Br. 12.
Accordingly, we reject claim 18.
Claim 19
Appellants argue that Smith fails to disclose the migrating function
relying on the previously-presented rationale for claim 16. Br. 12.
Appellants additionally point out that claim 19 is a specific way to migrate
that involves migrating a virtual server to a "node that is running the second
virtual machine" as recited. Id.
We are not persuaded by Appellants' arguments (id.) for the reasons
stated previously. Moreover, Smith discusses migrating virtual machine B
from server 26 to another node, server 30. Smith, col. 5, 1. 54 to col. 6, 1. 6,
cited in Ans. 6. Server 30 is running a second virtual machine (e.g., E), as
required by claim 19. See Smith, Fig. 1, col. 6, 11. 22-25 (stating the
example is based on Fig. 1 ).
Accordingly, we reject claim 19.
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Application 12/911,832
Claim 20
According to the Examiner, Smith discloses the specific migration of
virtual servers recited in claim 20, citing the same paragraphs as claim 19.
Ans. 6. In responding to Appellants' arguments (Br. 12), the Examiner
further points to the discussion of claim 16 without further comment.
Ans. 12.
Appellants contend that Smith lacks the recited migration for the
reasons stated in connection with claim 16. Br. 12. Additionally,
Appellants argue that Smith would not benefit from migrating a second
virtual machine from a second device. Id.
Although Smith migrates virtual machine B from server 26 to another
node (Smith, col. 5, 1. 54 to col. 6, 1. 6, cited in Ans. 6), Smith does not
disclose any other moves. Furthermore, the Examiner only provides a bare
citation without any further explanation or reasoning that Smith teaches
claim 20's recitation. Ans. 6. On this record, the Examiner has not shown
that Smith migrates both virtual servers in the manner recited.
Accordingly, we do not reject claim 20.
Claim 21
Appellants argue that Smith does not disclose any aspect of inter-
virtual-machine communication. Br. 13. We, however, are unpersuaded for
the reasons stated previously. Specifically, as discussed previously, an
example of inter-virtual-machine communication monitoring is Smith's
bandwidth tracking between virtual machine A and each of the other virtual
machines. See Smith, col. 4, 11. 19-23, Fig. 4, cited in Ans. 10.
Accordingly, we reject claim 21.
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Application 12/911,832
Claim 22
Appellants argue that Smith lacks the recited average, mean, or
standard deviation. Br. 13. The Examiner finds that Smith calculates the
recited average. Ans. 13. In the Examiner's view, Smith averages the
calculations over a period of time. Id.
The Examiner's findings are not supported on this record. For
example, Smith tracks overall bandwidth and peak bursts. Smith, col. 4,
11. 12-16. We, however, see no evidence that this bandwidth (id.) must be
averaged instead of accumulated, for example.
Accordingly, we do not reject claim 22.
Claim 23
Claim 23 depends from claim 16 and additionally recites "computer
useable program code for ranking the virtual machines having the highest
inter-virtual machine communication." The Examiner relies on Figure 4 to
teach this limitation. See Ans. 7 (citing Smith, Fig. 4). Specifically,
Examiner finds that Smith ranks virtual machines using the traffic matrix.
See Ans. 7 (citing Smith, Fig. 4). But we agree with Appellants (Br. 8) that
an arrangement where multiple virtual machines are on a single server does
not teach the limitations of claim 16 as already discussed. There are also
insufficient findings in the record to demonstrate that Figure 4 is used to
rank the virtual machines having the highest inter-virtual machine
communication, as recited in the scenario where there are only two inter-
virtual machines in the network.
Accordingly, we do not reject claim 23.
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Application 12/911,832
Claims 24-30
Claims 24--30 are rejected under§ 102 based on Smith. Ans. 7-8.
Appellants fail to present any arguments for these rejections. See Br. 15-14.
The issues before us, then, are the same as those in connection with claim
16, and we refer Appellants to our previous discussion.
For the above reasons, we reject claims 24--30 under § 103 based on
our previous discussion.
DECISION
Because we summarily sustain the rejection under 35 U.S.C. § 101,
the Examiner's decision rejecting claims 16-30 is affirmed.
This opinion contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) for claims 16-19, 21, and 24--30 under 35 U.S.C. § 103
over Smith.
This section provides that "[a] new ground of rejection ... shall not be
considered final for judicial review."
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 41.50(b)
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