Ex Parte 7426720 et al

Patent Trial and Appeal Board

Dec 31, 2013

95001560 (P.T.A.B. Dec. 31, 2013)

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.
95/001,560 03/01/2011 7426720 13557.105125 8687
25226 7590 12/31/2013
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/31/2013 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
____________
GOOGLE, INC.
Requester and Respondent

v.

ORACLE AMERICA, INC.
Patent Owner and Appellant
____________________

Appeal 2013-009174
Reexamination Control 95/001,560
Patent US 7,426,720 B1
Technology Center 3900

____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and
ANDREW J.DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge

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DECISION ON APPEAL
STATEMENT OF THE CASE
Owner appeals under 35 U.S.C. § 134(b) (2002) from the final
decision of the Examiner adverse to the patentability of claims 1-8, 10-17,
and 19-22. We have jurisdiction under 35 U.S.C. § 315 (2002).
We affirm.
Invention
The '720 patent describes “[a] system and method for dynamic
preloading of classes through memory space cloning of a master runtime
system process” wherein the memory space is cloned as a child runtime
system process using copy-on-write semantics.
Claims
Claims 1-8, 10-17, and 19-22 are subject to reexamination and have
been rejected. Claims 1-22 are original patent claims. Claims 9 and 18 are
not subject to reexamination. Claims 1, 10, and 20 are independent.
Claim 1 is illustrative.
1. A system for dynamic preloading of classes through
memory space cloning of a master runtime system process,
comprising:

A processor;

A memory

a class preloader to obtain a representation of at least one
class from a source definition provided as object-oriented
program code;

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a master runtime system process to interpret and to
instantiate the representation as a class definition in a memory
space of the master runtime system process;

a runtime environment to clone the memory space as a
child runtime system process responsive to a process request
and to execute the child runtime system process; and

a copy-on-write process cloning mechanism to instantiate
the child runtime system process by copying references to the
memory space of the master runtime system process into a
separate memory space for the child runtime system process,
and to defer copying of the memory space of the master runtime
system process until the child runtime system process needs to
modify the referenced memory space of the master runtime
system process.

Prior Art
Webb US 6,823,509 B2 Nov. 23, 2004
Kuck et al. (“Kuck”) US 2003/0088604 A1 May 8, 2003
Bryant et al. (“Bryant”) US 6,405,367 B1 Jun. 11, 2002
Traut et al. (“Traut”) US 7,313,793 B2 Jan. 15, 2004
(Filed Jul. 11, 2002)
Sexton et al. (“Sexton”) US 6,854,114 B1 Feb. 8, 2005
(Filed Feb. 25, 2000)
Bugnion et al. (“Bugnion”) US 6,075,938 Jun. 13, 2000

Bach, The Design of the Unix Operating System, Bell Telephone Labs., Inc.
(1986) (hereinafter “Bach”).
Dike, A User-Mode Port of the Linux Kernel, Proc. 4
th
Annual Linux
Showcase & Conference (2000) (hereinafter “Dike”).
Steinberg, Fiasco µ-Kernel User-Mode Port, Dresden University of
Technology, Institute of System Architecture (Dec. 19, 2002) (hereinafter
“Steinberg”).
Srinivasan, Advanced Perl Programming, O‟Reilly & Associates, Inc.
August (1997) (hereinafter “Srinivasan”).
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Owner’s Contentions

Owner contends that the Examiner erred in entering the following
grounds of rejections (App. Br. 8-9):
1. The rejection of claims 1-8, 10-17, and 19-22 under 35 U.S.C. §
103(a) as unpatentable over Webb, Kuck and Bach;
2. The rejection of claims 1-7, 10-16, and 19-22 under 35 U.S.C. §
102(b) as anticipated by Dike and Steinberg;
3. The rejection of claims 1-7, 10-16, and 19-22 under 35 U.S.C. §
103(a) as unpatentable over Dike and Steinberg;
4. The rejection of claims 1-8, 10-17, and 19-22 under 35 U.S.C. §
103(a) as unpatentable over Bryant and Bach;
5. The rejection of claims 1-8, 10-17, and 19-22 under 35 U.S.C. §
103(a) as unpatentable over Bryant and Traut.
6. The rejection of claims 1-8, 10-17, and 19-22 under 35 U.S.C. §
103(a) as unpatentable over Srinivasan and Bach; and
7. The rejection of claims 1-8, 10-17, and 19-22 under 35 U.S.C. §
103(a) as unpatentable over Sexton and Bugnion.
Owner also contends the Examiner erred by not properly considering
evidence of secondary considerations which Owner argues strongly supports
a conclusion of nonobviousness. App. Br. 28-29.

ANALYSIS
With respect to the first ground of rejection, Owner argues that Webb
teaches away from the use of multiple virtual machines, noting that “Webb
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expressly teaches the reuse of the same virtual machine to run successive
applications for speed and efficiency.” Owner asserts this teaches away
from Kuck and Bach, which both teach the use of multiple virtual machines.
App. Br. 17.
The Examiner finds that Webb does not teach away from a
combination with Kuck and Bach, postulating that the Webb system which
utilizes multiple processors would logically create multiple virtual machines.
The resultant system, with multiple processors and multiple virtual machines
would improve performance by allowing efficient use of all processors.
RAN 44.
We concur with the Examiner. “[W]hether a reference teaches away
from a claimed invention [is a] question[ ] of fact.” In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005). “A reference may be said to teach away when
a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In the present instance, we find
that Webb does not preclude or discourage the use of multiple processors,
and consequently, does not teach away from the use of multiple virtual
processors.
Still regarding the first ground of rejection, Owner argues that Kuck
teaches away from copy-on-write cloning, suggesting that “Kuck expressly
teaches allocating memory prior to storing Java classes into that memory,
rather than waiting until storage time.” App. Br. 18.
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In the Supplemental Goldberg Declaration (¶ 14), Owner‟s expert
opined that “cloning,” as understood by one of ordinary skill in the art,
requires the creation of a child process and copying of memory space to be
integral, rather than separate processes, as described within Kuck.
In the Flinn Declaration (¶ 30), Requester‟s expert opines that
“cloning” a virtual machine requires both memory allocation and copying of
the content of the parent‟s memory space into the memory space of the
child.
We find that “cloning” involves first allocating memory within a child
process and thereafter copying the content of the parent‟s memory space into
the allocated memory space. We are not persuaded that the system of Kuck,
in which the memory space is allocated initially, is incompatible with the
acknowledged copy-on-write process of Bach, in which the memory space is
not allocated until such time as the child process needs to modify the
parent‟s loaded classes. In each case, memory is allocated prior to the
copying of the content of the parent‟s memory space, and we find the
temporal sequences are not so dissimilar as to preclude the Examiner‟s
combination of the teaching of Kuck with the copy-on-write teaching of
Bach.
Owner presents no specific arguments, beyond those addressed above,
with respect to the patentability of claims 1-5, 7, 8, 10-14, 16, 17, 19, and
20. Therefore, for the reasons we set forth above, we find that the Examiner
did not err in rejecting claims 1-5, 7, 8, 10-14, 16, 17, 19, and 20 as
unpatentable under 35 U.S.C. § 103(a) over Webb, Kuck and Bach.
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Owner argues that the cited “Combination of Webb, Kuck and Bach
Does Not Disclose Dependent Claims 21 and 22.” App. Br. 19. Owner notes
that claim 21 recites a “resource controller to set operating system level
resource management parameters on the child runtime system process” and
that claim 22 similarly recites “setting operating system level resource
management parameters on the child runtime system process.” Owner urges
that none of the cited references disclose resource parameters at the
“operating system level” as required by claims 21 and 22. Id.
Specifically, Owner argues that Kuck merely discloses sharing
operating system (OS) resources between processes, which Owner asserts
does not involve “setting operating system level resource management
parameters.” Further, Owner asserts that the recited sharing is not applied to
“child runtime system process[es]” but rather to processes, not virtual
machines. Id. at 20.
Similarly, Owner argues that the Examiner‟s reliance on the nice call
of Bach is set by each process, rather than by the “requisite resource
controller.” Id.
The Examiner finds that the „720 patent, at column 9, lines12-27,
recites that “[o]ther types of resource management controls are possible”
inferring that Owner‟s reliance on a strict definition of the resource
management controls disclosed elsewhere within the „720 patent may be
misplaced.
In the Supplemental Flinn Declaration, Requester‟s expert opines that
the “resource controller” described in the „720 patent “merely uses existing
system calls provided by the operating system in precisely the manner in
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which those system calls were designed to be used.” Supplemental Flinn
Declaration, ¶ 22. Requester‟s expert further opines that such system calls
are disclosed in Bach at pp. 254-255. Id.
We find Owner‟s arguments regarding the alleged distinctions
between the claimed “resource controller” and “operating system level
resource management parameters” and the disclosure of “shared OS
parameters” by Kuck would be more appropriate in response to an
anticipation rejection, rather than a rejection based upon obviousness, as
asserted by the Examiner. We are not persuaded by Owner‟s argument that
the shared OS parameters of Kuck are not suggestive of “operating system
level resource management parameters” since they are shared by processes,
rather than by virtual machines (PAVMs). App. Br. 20.
As disclosed in Kuck, each Process Attachable Virtual Machine
(PAVM) is attached to an allocated operating system (OS) process and we
are persuaded that such an attached virtual machine necessarily shares the
operating system level resources associated with the process to which it is
attached.
We therefore find that the Examiner did not err in rejecting claims 21
and 22 as unpatentable under 35 U.S.C. § 103(a) over Webb, Kuck and
Bach.
With respect to the rejection of claims 6 and 15 as unpatentable under
35 U.S.C. § 103(a) over Webb, Kuck and Bach, Owner characterizes
Examiner‟s error as “No Reason to Combine” (App. Br. 20) but then
actually argues the failure of the cited references to “provide both a copy-on-
write process cloning mechanism…and a non-copy-on-write process
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cloning” without discussing the Examiner‟s proffered rationale for
combining the Webb, Kuck and Bach references. Id.
Consequently, we address Owner‟s arguments with regard to the
content of the references and not the rationale for combining those
references. Owner argues that none of the cited references disclose or
suggest any reason to provide both copy-on-write and non-copy-on-write
process cloning, as in the claimed invention.
The Examiner cited Kuck in the first Office Action, at page 13, as
depicting a process cloning mechanism to instantiate a child runtime system
process by copying the memory space of the master runtime system into a
separate memory space for the child runtime process, as described in Kuck
¶¶[0064-0065], and has equated this process to non-copy-on-write process
cloning. Owner has admitted that Bach teaches copy-on-write process
cloning in the Appeal Brief, at page 18. The Examiner has suggested the
combination of Bach and Kuck to teach the system of Kuck with the copy-
on-write process cloning of Bach. We are therefore convinced that the cited
combination of Kuck and Bach teaches or suggests both copy-on-write and
non-copy-on-write process cloning.

We therefore find that the Examiner did not err in rejecting claims 6
and 15 as unpatentable under 35 U.S.C. § 103(a) over Webb, Kuck and
Bach.

Finally, Owner argues that the Examiner erred by failing to properly
consider evidence of secondary considerations which Owner believes
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strongly supports a conclusion of nonobviousness. App. Br. 28.
Specifically, Owner presented evidence believed to show that the „720
patent satisfied a long felt need and that the claimed invention was copied by
Requester. Id. at 28-29.
Regarding long felt need, Owner urges that customers expressed a
desire for a product that embodied the claimed invention in order to reduce
memory usage. Owner argues that sharing memory between a master virtual
machine and a cloned virtual machine utilizing a copy-on-write process
cloning mechanism will result in greater memory efficiency. Response to
ACP 39-41.
The Examiner finds that the increase in memory usage efficiency is
based upon the use of copy-on-write techniques, which are disclosed in the
prior art in Bach and which Owner‟s expert has admitted was prior art.
RAN 71.
With respect to alleged copying, Owner asserts a press release which
announces the public availability of a Connected Device Configuration
Application Management System (CDC AMS), a product which Owner
asserts embodies the claimed invention set forth in the „720 patent. Owner
asserted various infringement contentions in the pending patent infringement
lawsuit; however, Requester‟s expert asserts the system calls alleged by
Owner to infringe are all provided by the underlying Unix or Linux
operating system. RAN 73.
In any event, the Examiner finds that an allegation of copying requires
actual, direct evidence such as “internal company documents, direct
evidence such as disassembling a patented prototype…and using [it] as a
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blueprint to build a replica, or access to the patented product.” Wyers v.
Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). ACP 72. Based on
the record, Patent Owner has merely provided a press release that allegedly
announces the availability of a product but has not provided documents or
other direct evidence demonstrating sufficiently that Requester disassembled
a patent prototype and used the disassembled prototype as a blueprint to
build a replica. In addition, Patent Owner asserts that the product described
in the press release embodies the claimed invention but does not provide
sufficient evidence supporting this contention. Hence, Patent Owner fails to
adequately demonstrate that the claimed invention was copied by the
Requester.
In view of the prior art status of the copy-on-write process, and the
lack of actual, direct evidence of copying, we find Owner‟s evidence of
secondary considerations is not sufficient to support a conclusion of
nonobviousness.
In view of our conclusion that the Examiner did not err in rejecting
the appealed claims based on Webb, Kuck and Bach, we do not address any
of the other rejections upon which the Examiner relies. See In re Gleave, 560
F.3d 1331, 138 (Fed. Cir. 2009).

Summary/Conclusion
We sustain the Examiner‟s rejections of claims 1-8, 10-17, and 19-22.

DECISION
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The Examiner‟s decision adverse to the patentability of claims 1-8,
10-17, and 19-22 is affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED

alw

Patent Owner:

Morrison & Foerster LLP
755 Page Mill Road
Palo Alto, CA 94304-1018

Third Party Requester:

King & Spalding
1180 Peachtree Street, NE
Atlanta, GA 30309-3521