Ex Parte Rostampour

Board of Patent Appeals and Interferences

Feb 28, 2012

11159649 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARAD ROSTAMPOUR
____________

Appeal 2009-013049
Application 11/159,649
Technology Center 2100
____________

Before KRISTEN L. DROESCH, GREGORY J. GONSALVES and
ERIC B. CHEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-20, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
The invention relates to systems, devices, and methods, including
program instructions, for migrating operating system images. One method
includes performing a process on a first device and pausing the operation of
the process as a persistent image, which is then migrated to a second device.
Abs.
Independent claims 1, 7 and 16 are illustrative of the issues on appeal
and are reproduced below (disputed limitations in italics):
1. A method for migration of operating system (OS)
images, comprising:
performing a process on a first device;
pausing operation of the process as a persistent image;
and
migrating the persistent image to a second device.

7. A computer readable medium having executable
instructions stored thereon to cause a device to perform a
method, comprising:
performing a process on a first device;
pausing operation of the process using hibernation
semantics;
migrating a persistent image to a second device; and
continuing the process on the second device from a point
where the operation was paused on the first device.

16. A computing device, comprising:
a first device, wherein the first device includes access to
a processor;
a memory coupled to the processor; and
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means for pausing operation of a process and migrating
a persistent state of the process to a second device without an
operating system shut down.

Claims 1, 2, 4-9 and 11-20 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Bradley (US 2005/0060590 A1).
Claims 3 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bradley.
ISSUES
Did the Examiner err in finding that Bradley describes “a persistent
image,” as recited in independent claim 1?
Did the Examiner err in finding that Bradley describes “pausing
operation of the process using hibernation semantics . . . ,” as recited in
independent claim 7, and similarly recited in independent claim 12?
Did the Examiner err in finding that Bradley describes “pausing
operation of a process and migrating a persistent state of the process to a
second device without an operating system shut down,” as recited in
independent claim 16?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”), Appellant’s arguments in the Reply Brief presented in
response to the Answer, and Appellant’s arguments in the Supplemental
Reply Brief presented in response to the Supplemental Answer. We agree
with Appellant’s conclusion regarding the limitations of claims 7-15. We
disagree with Appellant’s conclusions regarding the limitations of claims 1-6
and 16-20 and adopt as our own: (1) the findings and reasons set forth by the
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Examiner in the action from which this appeal is taken; and (2) the reasons
set forth by the Examiner in the Answer in response to the Appeal Brief.
We highlight and address specific findings and arguments for emphasis as
follows.
Claims 1, 2 and 4-6
Independent claim 1 recites: “pausing operation of the process as a
persistent image; and migrating the persistent image . . . .” Appellant argues
that Bradley does not describe the disputed limitations of claim 1 because
Bradley does not use the terms “image” or “persistent image” and does not
describe a persistent image, defined by Appellant as “including context or state
information.” App. Br. 9-10; Reply Br. 7-8. Appellant also argues that the
“definition” provided in the Specification is open-ended rather than closed-
ended and must at least include context and state information among other
attributes. App. Br. 9-10 (citing Spec. 9, l. 12). Appellant further argues that the
Examiner only demonstrates that Bradley saves and migrates state information,
but Bradley is silent as to context information and does not describe storing or
migrating context information. App. Br. 10; Reply Br. 8.
We are unpersuaded by Appellant’s arguments because Appellant
wishes for the Board to import a specific meaning for “persistent image”
based on Appellant’s disclosure of “the method includ[ing] pausing
operation of the process as a persistent image, i.e., including context and
state information.” Spec. 9, ll. 11-12; see also Spec. 11, ll. 1-2. We decline
to attribute Appellant’s narrow meaning to “persistent image” since
“limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). It is also improper to read
particular examples given in the specification into the claims unless they are
otherwise required by the claims. See Constant v. Advanced Micro-Devices,
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Inc. 848 F.2d 1560, 1571 (Fed. Cir. 1988). Instead, “the PTO applies to the
verbiage of the proposed claims 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
of definitions or otherwise that may be afforded by the written
description . . . .” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appellant does not direct us to any persuasive objective evidence, such as
expert testimony or an explicit definition in the Specification, to demonstrate
that the Examiner’s interpretation of a “persistent image” as including state
information is unreasonably broad or inconsistent with Appellant’s
Specification. Therefore, we agree with the Examiner that Bradley’s
description of virtual machines (VMs) that can be paused and Bradley’s
description that the halted VM’s state can be copied (see Ans. 3 (citing
Bradley ¶¶ 0021, 0034)) meets the disputed claim limitations.
For similar reasons, we are also unpersuaded by Appellant’s arguments
that Bradley does not describe “migrating the persistent image” on the basis
that this limitation is described in the Specification as including the transfer of
wakeup information to the second device. App. Br. 11-12; Reply Br. 9-10
(citing Spec. 11, ll. 21-23).
Last, Appellant argues that the Examiner suggests that the claimed
“process” is an application running on a VM, but the Examiner thereafter treats
the VM as the process being paused and migrated. App. Br. 11. Appellant also
argues that Bradley does not teach an application running on the VM is paused,
or that a persistent image of an application running on a VM is being paused or
migrated to a second device. App. Br. 11. Appellant further argues that the
Examiner does not suggest that Bradley teaches a process distinct from the VM
being paused or migrated. App. Br. 11.
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We are unpersuaded by Appellant’s arguments. We agree with and adopt
the Examiner’s position that VMs include an operating system instance and
associated applications running on the VM and when a VM is paused and
copied, the operating system instance and the associated applications running
on the VM are paused and the state of the whole VM, including the operating
system instance and the associated applications, are copied to storage. Ans. 9-
10 (citing Bradley ¶¶ 0014-0015, 0048). Appellant does not present
arguments in the Reply Brief contesting the Examiner’s position.
For these reasons, we sustain the rejection of claims 1, 2 and 4-6 as
anticipated by Bradley.
Claim 3
Claim 3 depends from claim 1. Although Appellant presents
arguments directed to claim 3 under a separate heading, Appellant does not
substantively address the limitations of claim 3. App. Br. 16-17. Instead,
Appellant argues that the deficiencies of the Bradley reference with respect
to claim 1 are not cured by the Examiner’s additional findings. App. Br. 16-
17.
For the same reasons as claim 1, we sustain the rejection of claim 3 as
obvious over Bradley.
Claims 16-20
Independent claim 16 recites: “a first device . . . ; and means for
pausing operation of a process and migrating a persistent state of the process
to a second device without an operating system shut down.” The Examiner
finds that that Bradley describes a first device (i.e., server 102), means for
pausing operation of a process (i.e., VM 204) and migrating a persistent state
of the process to a second device (i.e., server 100) without an operating
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system shut down. Ans. 6-7 (citing Bradley ¶¶ 0014, 0019, 00021). The
Examiner explains that VMs are operating system (OS) instances and are
migrated to a new server without shutdown. Ans. 7 (citing Bradley ¶¶ 0014,
0021). The Examiner further asserts that the VMs are suspended, rather than
shut down, based on Bradley’s description that VMs are instructed to halt
processing and the VMs which have been suspended are commanded to
resume. Ans. 11 (citing Bradley ¶¶ 0048).
Appellant argues that the claim elements of “a process” and “an
operating system” are distinct from one another. App. Br. 14. In addition,
Appellant argues that even if Bradley describes pausing a VM (i.e., the OS) and
saving the VM’s state information and migrating the VM to another physical
resource, Bradley does not disclose pausing operation of a process distinct from
the VM (i.e., the OS) nor migrating a persistent state of the process distinct
from migrating the VM. App. Br. 15. Appellant asserts that a process that is
distinct from the VM is an application running on the VM. App. Br. 15.
We are unpersuaded by Appellant’s arguments as they are not
commensurate in scope with the claim limitations. Claim 16 does not recite that
“a process” is distinct from “an operating system”. Moreover, claim 16 does
not require “a process” to be an application running on the VM.
We are also unpersuaded by Appellant’s assertion “that halting a VM, as
described in the Bradley reference, will be understood by those having ordinary
skill in the art as being a shutdown in place of the operating system [OS] prior
to migration thereof.” App. Br. 16. Appellant does not direct us to objective
evidence to support its assertion. Argument of counsel cannot take the place
of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Moreover, Appellant’s arguments too narrowly focus on Bradley’s description
of halting the processing of the VMs and that a VM is instructed to start at a
resource. App. Br. 16 (citing Bradley ¶¶ 0016, 0034, 0035) (emphasis in
original). In contrast, and as pointed out by the Examiner, Bradley describes
suspending the VMs and that the VMs which have been suspended are
commanded to resume at the allocated resources. Ans. 11 (citing Bradley ¶¶
0048); see also Bradley ¶ 0051.
For these reasons, we sustain the rejection of claims 16-20 as
anticipated by Bradley.
Claims 7-15
Independent claim 7 recites: “pausing operation of the process using
hibernation semantics . . . .” Independent claim 12 recites nearly identical
limitations. The Examiner finds that the disputed limitations are met by
Bradley’s description of one or more Virtual Machines (VMs) that can be
paused. Ans. 4, 5 (citing ¶ 0021). The Examiner explains that the VM on the
first device (i.e., server) is halted as VM technology allows the capability to
suspend the VM. Ans. 5. The Examiner explains that a VM itself is an
operating system (OS) and therefore, the VM is halted using its own
hibernation semantics. Ans. 4, 5 (citing ¶¶ 0014, 0015, 0034). The Examiner
further explains that VMs are instructed to halt processing, pause and copy
their state to storage so that resources can be put to low power state which are
well known semantics of hibernation. Ans. 10 (citing ¶¶ 0003, 0048).
Appellant argues that instructing a VM to halt processing and copy their
state does not teach using hibernation semantics. App. Br. 13 (citing Bradley ¶
0048, ll. 18-21). Appellant points out that the resources described by Bradley
that are powered-down are the physical resources, e.g., servers, while the
Examiner suggests that applications running on a VM correspond to
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“performing a process.” Next, Appellant argues that powering down a server
does not describe pausing operation of the process (on the VM) using
hibernation semantics. App. Br. 13. Last, Appellant argues that hibernation
semantics do not appear to be inherent in a VM, thus VM technology offering
the capability to suspend a VM does not inherently describe or teach “pausing
operation of the process using hibernation semantics.” App. Br. 13.
We agree with Appellant’s arguments that Bradley describes powering
down the physical resources, e.g., servers, (see Bradley ¶ 0016, ll. 9-11; ¶ 0019,
ll. 4-12; ¶¶ 0034-0036; ¶ 0048, ll. 16-25) and that “pausing operation of the
process using hibernation semantics” is not inherent based on Bradley’s
description of pausing, halting, or suspending a VM running on a physical
resource or server.
For these reasons, we do not sustain the rejections of claims 7-9 and 11-
15 as anticipated by Bradley and claim 10 as unpatentable over Bradley.
Further Prosecution of claims 7-11
In the event of further prosecution, we direct the Examiner’s attention
to the claim 7 recitation of: “[a] computer readable medium having
executable instructions stored thereon . . . .” As stated in Appellant’s
Specification,
[t]he storage subsystem 124 provides various computer
readable medium. As used herein, a computer readable medium
is intended to include the types of memory described above.
Program embodiments as will be described further herein can
be included with the computer readable medium described
above and may also be provided using a carrier wave over a
communications network such as the Internet, wireless RF
networks, etc.
Spec. 6, ll. 1-6 (emphasis added). Upon further prosecution, we leave it to
the Examiner to determine whether the computer readable medium is
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directed to both statutory and non-statutory subject matter, such as transitory
propagating signals (i.e., a carrier wave). See In re Nuitjen, 500 F.3d 1346,
1353-54 (Fed. Cir. 2007) (holding that transitory, propagating signals are not
patentable subject matter under § 101). “A claim that covers both statutory
and non-statutory embodiments . . . embraces subject matter that is not
eligible for patent protection and therefore is directed to non-statutory
subject matter.” U.S. Patent & Trademark Office, Interim Examination
Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C.
§ 101, Aug. 2009, at 2, available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf
DECISION
We AFFIRM the rejection of claims 1, 2, 4-6 and 16-20 under
35 U.S.C. § 102(e) as anticipated by Bradley.
We AFFIRM the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Bradley.
We REVERSE the rejection of claims 7-9 and 11-15 under
35 U.S.C. § 102(e) as anticipated by Bradley.
We REVERSE the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Bradley.
TIME PERIOD
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).
AFFIRMED-IN-PART

ELD