VMWARE, INC.

Patent Trials and Appeals Board

May 3, 2021

2020006430 (P.T.A.B. May. 3, 2021)

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.
14/604,679 01/24/2015 AMARNATH PALAVALLI B720.01 5810
152625 7590 05/03/2021
GLOBAL IP SERVICES, PLLC/VMWARE, INC./NICIRA, INC.
121 MOORE ST.
PRINCETON, NJ 08540
EXAMINER
TURNER, SHELBY AUBURN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
docketing@globalipservices.com
ipadmin@vmware.com
pnama@globalipservices.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMARNATH PALAVALLI, KUMAR GAURAV,
and T.N RAVI KUMAR
____________

Appeal 2020-006430
Application 14/604,6791
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 2, 5–9, 12–16, and 19–21. We have jurisdiction
under 35 U.S.C. § 6(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies “VMWARE, INC.” as the real party in interest. Appeal Br. 3.

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Application 14/604,679

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SUMMARY OF DECISION
We Affirm.

THE INVENTION
Appellant states that the invention relates to “a method for minimizing
license costs in conjunction with guest operating system (OS) instances that
are licensed using a volume based licensing model in a virtual datacenter.”
Spec. ¶ 5.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
l. A method for reducing guest operating system (OS)
utilization licensing costs in a volume based licensing model in
a virtual datacenter, comprising:
receiving a request to provision a virtual machine (VM)
that runs a type of guest OS in the virtual datacenter;
determining whether any one of host computing systems
in the virtual datacenter has a powered off VM running the type
of guest OS upon receiving the request;
when there is powered off VM running the type of guest
OS, placing the VM in the virtual datacenter by erasing a guest
OS license key in the powered off VM and reassigning the guest
OS license key associated with the powered off VM to the VM;
when there is no powered off VM running the type of guest
OS, determining whether any one of the host computing systems
in the virtual datacenter has an idle VM running the type of guest
OS by monitoring VMs in the virtual datacenter;
when there is idle VM running the type of guest OS,
powering off the idle VM and placing the VM in the virtual
datacenter by erasing the guest OS license key in the powered off
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idle VM and reassigning the guest OS license key associated with
the powered off idle VM to the VM; and
when there is no idle VM running the type of guest OS,
obtaining a new license key for the VM and placing the VM in
the virtual datacenter using the new license key.
Appeal Br. 18 (Claims App.).

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Name Reference Date
Traut US 7,313,512 B1 Dec. 25, 2007
Herington US 8,650,296 B1 Feb. 11, 2014
Fitzgerald US 2008/0134176 A1 June 5, 2008
McCune US 2009/0328056 A1 Dec. 31, 2009
Stern US 2011/0119191 A1 May 19, 2011
Abuelsaad US 2013/0191923 A1 July 25, 2013

The following rejections are before us for review.
1. Claims 1, 5, 8, 12, 15, and 19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McCune in view of Abuelsaad, in
further view of Traut, in further view of Herington.
2. Claims 2, 6, 9, 13, 16, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McCune, Abuelsaad, Traut, Herington,
as applied to claims 1, 8, and 15 above, in further view of Fitzgerald.
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3. Claims 7, 14, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McCune, Abuelsaad, Traut, Herington, as applied to
claims 1, 8, and 15 above, in further view of Stern.

FINDINGS OF FACT
1. McCune discloses:
FIGS. 5A-5B illustrate some embodiments of
some virtual guests and virtual host provisioned on
a physical computing machine by a centralized
server. Referring to FIG. 5A, a physical computing
machine 510 has a hypervisor 515 running on it.
Broadly speaking, the hypervisor 515 acts as a
virtualization controller on the physical computing
machine 510 to allow a virtual host 520 and one or
more virtual guests (such as virtual guest A 521,
virtual guest B 522, etc.) to run on the physical
computing machine 510. In the current example,
each of the virtual host 520 and the virtual guests
521-524 has a copy of the same operating system
running on it.
McCune ¶ 38.
2. McCune discloses,
[a]s mentioned above, each virtual guest running a
copy of the operating system consumes one
entitlement if its virtual host has a limited license to
the operating system. If the maximum number of
entitlements has been reached on the virtual host,
then the process transitions to processing block 625.
At block 625, processing logic requires the user to
obtain an additional entitlement or an unlimited
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license from the software vendor. In response, the
user may purchase an additional entitlement or an
unlimited license from the software vendor.
Alternatively, the user may delete an existing virtual
guest to free up an entitlement and then attempt to
provision the virtual guest again. If processing logic
determines at block 623 that the maximum number
of entitlements has not been reached yet, then the
process transitions to processing block 630.
Id. ¶ 47.
3. Abuelsaad discloses:
[D]etermine whether the license 90 is available;
determine, responsive to the license 90 being
unavailable, whether the license 90 is obtainable
based on the data 82A-N, an organizational license
policy, and/or a current configuration of the
networked computing environment 86 (e.g.,
inactivity of licenses 84A-N, priority of users for
using the licenses 84A-N, frequency of use of the
set of software installations 74A-B, geographic
location of the users, or datacenter location within
the networked computing environment); and/or
allocate the license 90 (e.g., with a predetermined
expiration time) to the requester responsive to the
license 90 being obtainable.
Abuelsaad ¶ 58.
4. Abuelsaad discloses:
2. Historical and real time information 82A-
N are substantially continuously gathered about
software usage within the cloud resources. Such
data may comprise and/or identify a set of
characteristics pertaining to the software usage such
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as:
. . . .
. . . B. Uptime/Runtime of Software Installations
. . . e.g., Instance X has but WAS is currently
not running
. . . C. Uptime/Runtime of Instances
. . . e.g., Instance X has WAS but Instance X is
stopped.
Id. ¶¶ 62, 65–68.
5. Herington discloses:
License rights can be transferred if the license
for workload W11 is for more resources than are
currently available to workload W11. Alternatively,
even if all resources are available to workload W11,
they may not be used, or they may be used but not
required (e.g., workload W11 may be a low-priority
workload). In that case, then some or all resources
available to workload W11 can be inactivated and
left idle, or inactivated and transferred to workload
W21. Then, the freed license rights can be
transferred to workload W11. Then the required
hardware resources can be transferred from
workload W12 to workload W11.
Herington col. 2, l. 61–col. 3, l. 4.
6. The Specification describes the virtual datacenter as including,
inter alia, a “management server 102 that is communicatively coupled
to multiple host computing systems 106B-N via network 118 via
associated virtual switches 110 A-N.” Spec. ¶ 13.
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7. We adopt as our own, the Examiner’s findings as set forth on
pages 2–23 in the Final Office Action and on pages 6–13 in the
Examiner’s Answer.

ANALYSIS
35 U.S.C. § 103(a) REJECTIONS

The rejections are affirmed as to claims 1–2, 5–9, 12–16, and 19–21.
The Appellant argues claim 1 as representative of the group of independent
claims 1, 8, and 15. (Appeal Br. 15). The Appellant does not provide a
substantive argument as to the separate patentability of claims 5, 12 and 19
that depend from claims 1, 8 and 15, respectively, and which are together
separately rejected. Therefore, we address only independent claim 1, and
independent claims 8 and 15 rise and fall with claim 1 along with the above
noted dependent claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). The
rejections of dependent claims 2, 6, 9, 13, 16, and 20 rejected separately
using the additional reference to Fitzgerald, and dependent claims 7, 14, and
21 rejected separately using the additional reference to Stern, are also
affirmed because Appellant has not challenged each separate rejection with
any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).
We begin by construing the scope of claim 1. Claim 1 recites in
pertinent part: “placing the VM in the virtual datacenter by erasing a guest
OS license key in the powered off VM and reassigning the guest OS license
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key associated with the powered off VM to the VM,” and “placing the VM
in the virtual datacenter by erasing the guest OS license key in the powered
off idle VM and reassigning the guest OS license key associated with the
powered off idle VM to the VM.”
The Specification describes the virtual datacenter as comprising a
management server communicatively coupled to multiple host computing
systems via a network and associated virtual switches (FF. 6). In essence,
the virtual datacenter is a host, which connects to virtual machines via a
network. Claim 1 itself defines the function of “placing the VM in the
virtual datacenter,” as occurring “by erasing a guest OS license key in the
powered off VM and reassigning the guest OS license key associated with
the powered off VM [/idle] to the VM.” The Specification at paragraph 15
states that the, “guest OS cost optimization module 116 then places VM
VM1 by either reusing the type of guest OS license or using a new instance
of the type of guest OS based on availability of powered off VM and/or idle
VM in virtual datacenter 100.” Thus, we construe the claimed “placing”
function to mean an action which results in a VM becoming
communicatively coupled with the virtual datacenter either by taking the OS
license key from a powered off/idle VM by having its guest OS license key
erased and reassigned, or through a new license key.
We also construe the limitations of claim 1 starting with “when” to be
conditional limitations dependent on three mutually exclusive conditions,
only one of which need be met by the prior art, namely: 1) POWERED OFF
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VM state; 2) IDLE VM state; and 3) neither of (1) or (2) resulting in a new
license being obtained. See Ex parte Schulhauser, Appeal No. 2013-
007847, 2016 WL 6277792, at *3–5 (PTAB Apr. 28, 2016) (precedential).
Appellant argues concerning McCune, “the user may delete an
existing virtual guest to free up an entitlement and then attempt to provision
the virtual guest again. Thus, McCune merely describes about deleting an
existing virtual guest to free up an entitlement in order to provision the
virtual guest.” Appeal Br. 10 (emphasis omitted).
We are not persuaded of error by Appellant’s argument because
Appellant is attacking the reference individually when the rejection is based
on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981). Specifically, the Examiner relies on Abuelsaad, and not McCune, for
teaching reassigning a license from one VM to another VM (Final Act. 9)
based on inactivity of licenses and/or frequency of use of the set of software
installations.2 (FF. 3, 4). We find that one of ordinary skill in the art would
understand that access parameters, such as inactivity of licenses and/or
frequency of use of the set of software installations, would encompass the
claimed IDLE or POWER OFF states of a VM.
Appellant next argues, “nowhere [does] Abuelsaad teach or suggest
about guest operating system for placing the VM in the datacenter” (Appeal
Br. 11).

2 Herington also discloses this reassigning feature (FF. 5) which we deem
cumulative to Abuelsaad.
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In light of the breadth of the claim, the Appellant’s argument is not
persuasive as to error in the rejection because the claim 1 does not recite
“guest operating system for placing the VM in the datacenter.” In fact,
claim 1 leaves open as to what operational device causes “placing the VM in
the datacenter.”
Notwithstanding, to the extent Appellant is arguing that Abuelsaad
fails to disclose a guest operating system, we note that McCune explicitly
discloses such a system, stating, “each virtual guest running a copy of the
operating system consumes one entitlement if its virtual host has a limited
license to the operating system” (FF. 2). Accordingly, McCune explicitly
discloses a guest operating system which, through the intermediary of a
limited license, operates to place one guest VM in the virtual
datacenter/virtualization controller (FF. 1). Moreover, McCune discloses
placing the one virtual guest in the virtual datacenter over another existing
guest by deleting the existing virtual guest to free up an entitlement for the
one guest causing it and the virtual datacenter to become communicatively
coupled in lieu of the existing guest. (FF. 1, 2).
The remainder of Appellant’s arguments are singular and are
accounted for by the combination of Abuelsaad and McCune as discussed
above. For example, on page 14 Appellant argues, inter alia, that Herington
and Traut fail to disclose, “placing of the VM in the virtual datacenter,” but
as found above, McCone discloses this feature. (FF. 1, 2).

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CONCLUSION
We conclude the Examiner did not err in rejecting claims 1, 2, 5–9,
12–16, and 19–21 under 35 U.S.C. § 103(a).
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 8, 12, 15,
19
103(a) McCune,
Abuelsaad, Traut,
Herington
1, 5, 8, 12, 15,
19

2, 6, 9, 13, 16,
20
103(a) McCune,
Abuelsaad, Traut,
Herington,
Fitzgerald
2, 6, 9, 13, 16,
20

7, 14, 21 103(a) McCune,
Abuelsaad, Traut,
Herington, Stern
7, 14, 21
Overall
Outcome
1, 2, 5–9, 12–
16, 19–21

DECISION
The decision of the Examiner to reject claims 1, 2, 5–9, 12–16, and
19–21 is affirmed.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED