VMware, Inc.

Patent Trials and Appeals Board

Feb 8, 2022

2020005369 (P.T.A.B. Feb. 8, 2022)

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. 15/880,120 01/25/2018 Karthikeyan Ramasamy D793 4874 152606 7590 02/08/2022 Olympic Patent Works PLLC 4979 Admiral Street Gig Harbor, WA 98332 EXAMINER CHEN, QING ART UNIT PAPER NUMBER 2191 MAIL DATE DELIVERY MODE 02/08/2022 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 KARTHIKEYAN RAMASAMY, DARSHAN DIGIKAR, JASMINE EJNER, VIKRANTH RAVI SHETTY, and RAMACHANDRAN THIRUPATHI ____________________ Appeal 2020-005369 Application 15/880,120 Technology Center 2100 ____________________ Before MARC S. HOFF, CATHERINE SHIANG, and MICHAEL T. CYGAN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1−19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s invention is a method and system to carry out live migration of multi-node applications in distributed computing facilities including cloud computing facilities. The invention employs an 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 VMWARE, INC. Appeal Br. 1. Appeal 2020-005369 Application 15/880,120 2 installer/agent and a data-transformation component to install new versions of a multi-node application within a distributed computing system, and then warm start each application-provided service within the newly installed new- version application nodes. Each warm-started application service is brought online to service subsequently received service requests as older-version corresponding services of current application nodes complete requested services and terminate. Spec. ¶ 1, 3. Claim 1 is reproduced below: 1. A live-migration method that migrates a multi-node application executing as multiple instances from a current version to a new version within a distributed computing system, the method comprising: downloading an installer/agent in the distributed computing system; determining, by the installer/agent, version-update information; installing, by the installer/agent, multiple instances of the new version of the multi-node application within the distributed computing system; identifying, by the installer/agent, services provided by the multi-node application; warm starting, by the installer/agent, the multiple instances of the new version of the multi-node application, including generating, by the installer/agent, new-version data for the multiple instances of the new version of the multi-node application from current-version data; deploying new versions of each of the identified services; and terminating and uninstalling the multiple instances of the current version of the multimode application The prior art relied upon by the Examiner as evidence is: Name Reference Date Tsirkin US 2014/0215172 A1 July 31, 2014 Magnezi et al. US 9,841,988 B1 Dec. 12, 2017 Appeal 2020-005369 Application 15/880,120 3 Claims 1−19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Magnezi and Tsirkin. Throughout this decision, we make reference to the Appeal Brief (“Appeal Br.,” filed Jan. 28, 2020), the Reply Brief (“Reply Br.,” filed July 10, 2020]), and the Examiner’s Answer (“Ans.,” mailed May 22, 2020) for their respective details. ISSUE 1. Did the Examiner err in failing to give weight to the preamble of each of the independent claims? 2. Does the combination of Magnezi and Tsirkin teach or suggest live migration of a multi-node application executing as multiple instances from a current version to a new version? PRINCIPLES OF LAW 37 CFR 41.37(c)(1)(iv) states, in pertinent part: When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone. 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. Appeal 2020-005369 Application 15/880,120 4 “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality to the claim.’” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). ANALYSIS Appellant presents a unitary argument for claims 1−9. Appellant addresses its remarks exclusively to the language of claim 1. Pursuant to 37 CFR 41.37(c)(1)(iv), we select claim 1 as representative of the claims under appeal, and we decide the appeal on the basis of that representative claim 1. Independent claim 1 recites, in pertinent part, “a live-migration method that migrates a multi-node application executing as multiple instances from a current version to a new version.” Independent claims 8 and 15 recite analogous limitations. The Examiner finds that the preamble, ”a live-migration method that migrates a multi-node application executing as multiple instances from a current version to a new version within a distributed computing system” has not been given patentable weight. . . . A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. Final Act. 14−15, citing In re Hirao (CCPA 1976) and Kropa v. Robie (CCPA 1951). Appellant argues that the Examiner has not given proper weight to the preamble of independent claim 1. Appeal Br. 12. Appellant contends that Appeal 2020-005369 Application 15/880,120 5 Kropa does not reflect the current law, and further contends that the preamble of claim 1 “explicitly and straightforwardly indicates what the claimed method does . . . . [T]he remaining portions of the claim absolutely and necessarily depend on this language.” Appeal Br. 13. We agree with Appellant. We determine that the Examiner mischaracterizes the case law pertaining to giving patentable weight to the preamble. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality to the claim.’” Reply Br. 2−3, citing Pitney Bowes, 182 F.3d at 1305. We agree with Appellant’s argument that the remaining portions of claim 1 necessarily depend on the language of the preamble. Appeal Br. 13; Reply Br. 3. For example, subsequent recitations of “multi-node application” and “distributed computing system” depend on their initial recitation in the preamble of the claim. Id. We further agree with Appellant that by failing to give weight to the preamble, the Examiner has erred in failing to appreciate the difference between application instances contained within virtual machines and the claimed multiple instances of a multi-node application. Appellant argues, and we agree, that Magnezi teaches updating a service virtual machine and transferring active sessions to the service virtual machine. Appeal Br. 13; Magnezi col. 2:4−6, 15−19, 63−66. Appellant’s Specification sets forth a clear distinction, however, between multi-node applications and virtual machines. Virtualization and related topics are described at paragraphs 18−41. Appellant then turns to the contrasting subject of his invention, the live migration of multi-node applications, at paragraphs 42 et seq. Virtual machines or virtualization are never mentioned in Appellant’s Specification Appeal 2020-005369 Application 15/880,120 6 from paragraph 42 forward, once Appellant turns his attention to the invention under appeal. We agree with Appellant’s contention that virtual machines “do not have the problem of locating external computational resources . . . used by the current version of a multi-node application and transforming the data contained in those computational resources to a new data model.” Appeal Br. 14; Spec. ¶ 44, Figure 11E. In contrast with multi- node applications, virtual machines and virtual machines are “self- contained” and “all of the data used by applications in a virtual appliance can be included in the image . . . used to transmit a new version of the virtual machine or virtual appliance to a computer system for installation and launching.” Appeal Br. 14. We find that the Examiner erred in failing to give proper weight to the preamble of the independent claims. We further find that the Examiner erred in finding that Magnezi teaches live migration of a multi-node application executing as multiple instances from a current version to a new version within a distributed computing system. Accordingly, we conclude that the Examiner erred in rejecting claims 1−19 as being unpatentable over Magnezi and Tsirkin. We do not sustain the Examiner’s § 103 rejection of claims 1−19. CONCLUSIONS 1. The Examiner erred in failing to give weight to the preamble of each of the independent claims. 2. The combination of Magnezi and Tsirkin cited by the Examiner does not teach or suggest live migration of a multi-node application executing as multiple instances from a current version to a new version. Appeal 2020-005369 Application 15/880,120 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1−19 103 Magnezi, Tsirkin 1−19 ORDER The Examiner’s decision to reject claims 1−19 is reversed. REVERSED