International Business Machines Corporation

Patent Trials and Appeals Board

Jun 2, 2020

2019001920 (P.T.A.B. Jun. 2, 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.
14/484,871 09/12/2014 Joseph W. Cropper ROC920140131US1 7473
46296 7590 06/02/2020
MARTIN & ASSOCIATES, LLC
P.O. BOX 548
CARTHAGE, MO 64836-0548
EXAMINER
BULLOCK JR, LEWIS ALEXANDER
ART UNIT PAPER NUMBER
2199
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
derekm@ideaprotect.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH W. CROPPER1
____________

Appeal 2019-001920
Application 14/484,8712
Technology Center 2100
____________

Before JEFFREY S. SMITH, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BARRY, Administrative Patent Judge.
DECISION ON APPEAL3
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–9 and 21–27, which are all the
pending claims. See Appeal Br. 1–15; Non-Final 1–13. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as International Business
Machines Corporation. Appeal Br. 1.
2 This Application is related to application 14/488,164, for which an appeal
also was filed. Appeal Br. 1.
3 We refer herein to the Non-Final Office Action mailed Feb. 28, 2018
(“Non-Final”), Appeal Brief filed July 14, 2018 (“Appeal Br.”), Answer
mailed Nov. 2, 2018 (“Ans.”), Reply Brief filed Jan. 2, 2019 (“Reply Br.”),
and the Specification filed Sept. 12, 2014 (“Spec.”).
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We AFFIRM.
Introduction
Appellant describes the invention as “relat[ing] to expediting host
maintenance in a cloud computing environment by intelligently suspending
essentially inactive virtual machines based on metrics of the virtual
machines.” Spec. ¶ 2.
Claim 1 is exemplary of the claims on appeal:
1. An apparatus comprising:
at least one processor;
a memory coupled to the at least one processor;
a cloud computing system with a host computer having
a plurality of active virtual machines;
a maintenance mode mechanism (MMM) residing in the
memory and executed by the at least one processor, wherein
the MMM expedites placing the host in a maintenance mode
by providing an option to a user to expedite the maintenance
mode;
in response to the user selecting to expedite the
maintenance mode, reducing the number of virtual machines
that must be migrated before entering the maintenance mode
by determining at least one virtual machine of the plurality of
active virtual machines on the host computer is an essentially
inactive virtual machine and then suspending the essentially
inactive virtual machine to reduce the number of VMs that
need to be migrated prior to placing the host computer in the
maintenance mode.
Appeal Br. 12 (Claims App’x) (formatting modified).
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Rejections & References
The Examiner rejected claims 1–3, 5–9, 21, 22, and 24–27 under 35
U.S.C. § 103 as unpatentable over Muller (US 2014/0165060 A1; June 12,
2014) and Wookey (US 2007/0171921 A1; July 26, 2007). Non-Final 3–10.
The Examiner rejected claims 4 and 23 under § 103 over Muller,
Wookey, and Van Riel (US 2008/0208931 A1; Aug. 28, 2008). Non-Final
10–12.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions of reversible error. We disagree with Appellant’s conclusions.
Instead, as consistent with our discussion below, we adopt the Examiner’s
findings and reasons as set forth in the Non-Final Office Action from which
this appeal is taken and as set forth in the Answer. We highlight the
following for emphasis.
Claim 1
In rejecting claim 1, the Examiner finds Muller teaches “providing an
option to a user to identify inactive virtual machines” and, “in response to
the user selecting to identify inactive virtual machines, reducing the number
of virtual machines.” Non-Final 4 (emphasis omitted) (citing Muller ¶¶ 37,
40). The Examiner then finds Wookey teaches a maintenance mode option,
and relies on the combined disclosures of Muller and Wookey for teaching
the two disputed limitations of (1) “providing an option to a user to expedite
the maintenance mode” and (2) “in response to the user selecting to expedite
the maintenance mode, reducing the number of virtual machines,” as recited.
Id. at 5–6 (citing Wookey ¶ 7) (emphasis modified). Appellant contends the
Examiner errs in these determinations. See Appeal Br. 4–8; Reply Br. 2–3.
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For the first disputed limitation, Appellant argues Muller is deficient
because it fails to teach presenting the user “an option to expedite [the]
maintenance mode.” Appeal Br. 5. This is unpersuasive because, as
discussed in the prior paragraph, the Examiner relies on the combination of
Muller and Wookey for teaching the disputed limitation, i.e., the rejection
does not rely on Muller for teaching “to expedite the maintenance mode.”
See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(explaining that each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining one
cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of references).
Appellant also argues the Examiner errs in relying on the combination
of Muller and Wookey for teaching the second disputed limitation of “in
response to the user selecting to expedite the maintenance mode, reducing
the number of virtual machines,” as recited. See Appeal Br. 5–7. In
particular, Appellant contends the Examiner, by finding that Muller teaches
“in response to the user selecting to identify inactive virtual machines,
reducing the number of virtual machines” (Non-Final 6 (emphasis omitted)),
“has fundamentally changed the nature of the invention by changing the
claim limitations” (i.e., because claim 1 recites “in response to the user
selecting to expedite the maintenance mode” not “in response to the user
selecting to identify inactive virtual machines”). Appeal Br. 6.
This argument is unpersuasive for the same reason as the first
disputed limitation. The Examiner’s finding that Muller teaches “in
response to the user selecting to identify inactive virtual machines” does not
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change the claim limitations. It is a finding that the Examiner combines
with Wookey’s “maintenance mode” to determine that the combination of
Muller and Wookey teaches the second disputed limitation. See Non-Final
4–6; see also Merck, 800 F.2d at 1097; Keller, 642 at 425.
Appellant further argues the Examiner makes piecemeal findings, the
Examiner’s combination of teachings from Muller and Wookey is
conclusory, and “it is not at all ‘understood’ how the Examiner gets from
these disjoint and piecemeal teachings to the actual claim limitations.”
Appeal Br. 6–7; see also Reply Br. 2–3 (arguing the rejection is a case of
impermissible hindsight). These arguments are unpersuasive.
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). As the Examiner
clarifies in response, and we agree:
Muller teaches providing an option to a user to identify
and suspend inactive virtual machines [Muller ¶0037-¶0040;
see rejection in office action filed 2/28/18 for further details]
and Wookey teaches performing maintenance (maintenance
mode), wherein executing VMs are migrated from one host to
another to facilitate the maintenance [Wookey ¶0007]. As
Wookey is concerned with executing VMs, it would have been
obvious to a person having ordinary skill in the art (PHOSITA)
to incorporate the teachings of Muller onto Wookey to provide
an option to the user to identify and suspend inactive virtual
machines. Doing so would benefit Wookey because it would
free up computing resources not being utilized (Muller ¶0037).
A PHOSITA would also recognize this combination would
result in expediting maintenance since inactive virtual
machines would have been suspended at the time of
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maintenance and therefore would no longer be migrated to
another host since they are not executing.
Ans. 6–7.
Appellant provides no persuasive evidence to show that combining
the references’ teachings as explained by the Examiner was “uniquely
challenging or difficult for one of ordinary skill in the art.” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). We also
note Appellant provides no evidence of secondary considerations, which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013). Further, Appellant has not asserted that the proposed
modification would have been beyond the capabilities of a person of
ordinary skill in the art. Absent such an assertion, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ,” and find a person of ordinary skill in the art would overcome those
difficulties within their level of skill. KSR, 550 U.S. at 418.
Appellant further argues Wookey is deficient because its disclosure
for suspending inactive machines is “to free physical computing resources,”
not to facilitate a maintenance mode. Appeal Br. 7 (quoting Wookey ¶ 7);
see also id. at 8 (contending “[a]t most, Wookey can be characterized by the
Examiner to teach that a maintenance mode exists,” but “Wookey cannot be
properly interpreted to teach or suggest ‘when placing the host in computer
maintenance mode’ as apparently alleged by the Examiner”).
This argument is unpersuasive. Appellant interprets Wookey too
narrowly. “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR, 550 U.S. at 421. The benefit of suspending
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inactive virtual machines when performing hardware maintenance is a basic
understanding of ordinarily skilled artisans, who would have understood
Wookey’s statement that “[e]xecuting virtual machines may be migrated . . .
to facilitate hardware maintenance,” and “[i]nactive virtual machines may be
suspended to free physical computing resources” teaches that the benefit of
suspending VMs before migrating executing virtual machines to facilitate
maintenance is “free[ing] physical computing resources . . . to allow the
unused physical machines to be shutdown to save power” or “to be re-
assigned for a different purpose.” Wookey ¶ 7.
Accordingly, we sustain the § 103 rejection of claim 1 and, along with
it, the § 103 rejection of claims 2, 3, 5–8, 21, 22, and 24–27, for which
Appellant offers no substantive arguments separate from those for claim 1.
Claims 4 and 23
Appellant argues error in the rejection of claims 4 and 23 together as a
group. Appeal Br. 10; see also Reply Br. 4–5. We select claim 4 as
representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 4 recites “[t]he apparatus of claim 34 wherein the physical
properties of the physical machine hosting the host computer include central
processing unit (CPU) utilization, disk utilization and network utilization.”
Appeal Br. 12 (Claims App’x). The Examiner finds Muller, in view of
Wookey, teaches all elements of claim 4 except for “disk utilization,” which

4 Claim 3 recites “[t]he apparatus of claim 2 wherein the metric of the host
computer is a metric of the physical properties of the physical machine
hosting the host computer.” Appeal Br. 12 (Claims App’x). Claim 2 recites
“[t]he apparatus of claim 1 wherein the MMM determines the at least one
virtual machine of the plurality of active virtual machines is an essentially
inactive virtual machine using a metric of the host computer with a threshold
for the metric.” Id.
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the Examiner finds Van Riel teaches. Non-Final 10–11 (citing Muller ¶¶ 20,
37; Van Riel ¶ 43).
Appellant argues the Examiner errs because, although Muller
discusses cluster size, CPU, memory and networks as virtual computing
resources, “these items in Muller refer to deployment settings for the
deployment plan generator.” Appeal Br. 10 (contending that “[i]n contrast
to Muller, in claim 4 the physical properties are used to determine whether a
virtual machine is essentially inactive”).
This argument is unpersuasive. Muller teaches a “resource manager”
with a “resource reclaimer” for identifying inactive VMs by analyzing logs
that indicate “the amount of system resources consumed.” Muller ¶ 37. The
information in the logs “is analyzed (e.g., by comparing the information to a
threshold) to determine if the virtual machine appears to be inactive and/or
provisioned with excess resources.” Id. Thus, the same consumed resource
may be compared to a threshold both to determine if a VM is inactive and to
determine if the VM was properly provisioned. Provisioned resources
include physical resources such as CPU, memory, and network information.
Muller ¶ 20. Therefore, contrary to Appellant’s argument, Muller teaches
that physical resources (or, “properties”) are used to determine whether a
virtual machine is essentially inactive.
Accordingly, we sustain the § 103 rejection of claims 4 and 23.
Claim 9
Appellant separately argues the Examiner errs in rejecting claim 9.
Appeal Br. 8–9; see also Reply Br. 3–4. Claim 9 adds to claim 1 the
limitation “wherein the MMM provides an option to a user to expedite the
maintenance mode when the maintenance mode is initiated by suspending
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essentially inactive virtual machines.” Appeal Br. 13 (Claims App’x). The
Examiner finds the combined teachings of Muller and Wookey teach this
limitation. Non-Final 9 (citing Muller ¶¶ 37, 40; Wookey ¶ 7).
Appellant initially contends Muller is deficient because it “does not
address an option to the user to expedite the maintenance mode by
suspending essentially inactive machines.” Appeal Br. 8. This is
unpersuasive because the rejection relies on Wookey, not Muller, for
teaching “expedit[ing] the maintenance mode.” See Merck, 800 F.2d at
1097; see also In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant also contends Wookey is deficient because it “teaches about
migration of executing virtual machines” and “does not teach or suggest
anything about expediting the maintenance mode by suspending inactive
virtual machines.” Appeal Br. 9. This is unpersuasive, because the rejection
relies on Muller, not Wookey, for suspending inactive VMs. See Non-Final
9 (citing Muller ¶ 40).
Appellant further contends the Examiner engages in hindsight and
construes Muller too broadly, contending it “teaches giving the user an
option to suspend virtual machines – nothing more.” Reply Br. 3–4.
Appellant construes Muller too narrowly. We discern no reversible error in
the Examiner’s determination that an ordinarily skilled artisan would have
been motivated to combine Wookey’s “maintenance mode” teaching with
Muller as proposed by the Examiner, because she or he “would recognize
implementing Muller’s teaching (in combination with Wookey, as explained
in the rejection) would provide the benefits of freeing up computing
resources and minimizing the amount of virtual machines to be migrated
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when a maintenance mode is initiated.” Ans. 7–8. Appellant has not
provided persuasive evidence or argument to rebut the Examiner’s finding.
Accordingly, we sustain the §103 rejection of claim 9.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–9, 21,
22, 24–27 103 Muller, Wookey
1–3, 5–9, 21,
22, 24–27
4, 23 103 Muller, Wookey, Van Riel 4, 23
Overall
Outcome 1–9, 21–27

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