Ex Parte Cromer et al

Patent Trial and Appeal Board

Oct 9, 2014

11692310 (P.T.A.B. Oct. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DARYL CARVIS CROMER, HOWARD JEFFREY LOCKER,
and RANDALL SCOTT SPRINGFIELD
____________________

Appeal 2012-0008901
Application 11/692,3102
Technology Center 3600
____________________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
April 1, 2011) and Reply Brief (“Reply Br.,” filed August 22, 2011), and the
Examiner’s Answer (“Ans.,” mailed June 23, 2011).
2 The real party in interest, identified by Appellants, is Lenovo Corporation.
App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention “relates to a system and method that
updates remaining time or subscription data for a rental computer” and more
particularly, “to a system and method that updates remaining time or
subscription data using a hypervisor that controls access to guest operating
systems” (Spec. ¶ 2).
Claim 1, reproduced below, with bracketing and paragraphing added,
is illustrative of the subject matter on appeal:
1. A computer implemented method comprising:
executing a hypervisor on a computer system, wherein
the hypervisor performs steps that include:
[(a)] reading a rental metric from a nonvolatile
storage area;
[(b)] comparing the rental metric with a rental
limit;
[(c)] allowing use of one or more guest operating
systems by a user of the computer system in response to
the rental metric being within the rental limit; and
[(d)] inhibiting use of the guest operating systems
by the user of the computer system in response to the
rental metric exceeding the rental limit.

REJECTIONS
Claims 1, 5, 15, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Birkestrand (US 2005/0010502 A1, pub. Jan. 13, 2005),
Mathias (US 2005/0004879 A1, pub. Jan. 6, 2005), and Frank
(US 2006/0184590 A1, pub. Aug. 17, 2006, hereinafter “Frank 3”).
Claims 2, 3, 8–10, 12, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Birkestrand, Mathias, Frank 3, and Zimmer
(US 2008/0120499 A1, pub. May 22, 2008).
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Claims 4 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Birkestrand, Mathias, Frank 3, Schneier (US 5,970,143, iss. Oct. 19,
1999), and Monsa-Chermon (US 2008/0215468 A1, pub. Sept. 4, 2008).
Claims 6 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Birkestrand, Mathias, Frank 3, Rozas (US 2008/0059726 A1,
pub. Mar. 6, 2008), and Frank (US 2006/0106845 A1, pub. May 18, 2006,
hereinafter “Frank 1”).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Birkestrand, Mathias, Frank 3, Frank (US 2006/0143446 A1, pub. June 29,
2006, hereinafter “Frank 2”), and Official Notice.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Birkestrand, Mathias, Frank 3, Zimmer, Schneier, and Monsa-Chermon.
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Birkestrand, Mathias, Frank 3, Zimmer, Rozas, and Frank 1.
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Birkestrand, Mathias, Frank 3, Zimmer, Frank 1, Frank 2, and
Official Notice.

ANALYSIS
Independent claim 1
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because none of the cited
references discloses or suggests “allowing use of one or more guest
operating systems . . . in response to the rental metric being within the rental
limit; and inhibiting use of the guest operating systems . . . in response to the
rental metric exceeding the rental limit,” as recited in claim 1 (App. Br. 6–
10). Instead, we agree with, and adopt the Examiner’s response to
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Appellants’ argument (citing paragraphs 24, 33–36, and 40 of Birkestrand
and paragraphs 2, 22–26, and 36–39 of Mathias), as set forth at pages 5 and
14–23 of the Answer.
Birkestrand discloses a method for allowing a customer to purchase
resource-time in a logically partitioned computer system (Birkestrand ¶ 40),
and describes that the logical partitions are managed by a partition manager,
i.e., a hypervisor, which controls the resources, e.g., hardware or software,
available for assignment to the logical partitions (id. at ¶¶ 35, 36).
Birkestrand describes that the system tracks actual usage in resource-time
units, and bills the customer for his or her actual usage (id. at ¶ 24).
Alternatively, the customer is allowed to prepay for resource-time, such that
the customer’s actual resource usage is metered and when the metered use
equals the prepaid resource time, use of the resources is disabled (id. at
¶¶ 24, 33, 34, and 40).
The Examiner acknowledges that Birkestrand does not disclose that
the hypervisor performs a metering function wherein the resource metered is
one or more guest operating systems. And the Examiner relies on Mathias
to cure the deficiencies of Birkestrand (Ans. 7).
Mathias discloses a system and method for monitoring the usage of
applications in a logically partitioned computer system, and describes that
each logical partition (“LPAR”) comprises a share of the computer
resources, and executes a guest operating system and application(s) using its
share of the computer resources (Mathias, ¶¶ 2, 22–24). Mathias also
describes that a hypervisor monitors and tracks, i.e., meters, LPAR usage
(id. at ¶¶ 25, 26).
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Appellants argue that the proposed combination fails to disclose or
suggest limitations (c) and (d), as recited in claim 1, because Birkestrand
does not disclose or suggest that an operating system is software that may be
controlled by the partition manager, i.e., Birkestrand’s hypervisor (App.
Br. 6–8), and, although Mathias monitors LPAR application usage, Mathias
does not monitor operating system usage (id. at 8). Appellants’ argument is
not persuasive.
Mathias describes at paragraphs 25–26 that the computing system is
partitioned such that each LPAR runs its own guest operating system
(see also Mathias, Fig. 1), and also describes that the hypervisor maintains a
log of which LPAR has been dispatched, how long the LPAR executed, and
on what processor(s) the LPAR was executed. Because Mathias discloses
that guest operating systems 22a, b, c . . . n run in LPARs 20a, b, c . . . n,
respectively, . . . . ” (Mathias ¶ 22), when a LPAR is executed, its
corresponding guest operating system also is executed. We, therefore, agree
with the Examiner that “metering the usage of the logical partition [as
disclosed in Mathias] necessarily is equivalent to metering usage of the guest
operating system” (Ans. 21), as called for in claim 1.
We also are not persuaded by Appellants’ argument that modifying
Birkestrand, as the Examiner proposes, i.e., to inhibit a user whose rental
time has expired from using the operating system, would render Birkestrand
unsatisfactory for its intended purpose (Reply Br. 2–4). Appellants argue
that because Birkestrand allocates operating systems 526A-526N executing
on logical partitions 525A-525N (Figure 5) among multiple customers,
disabling one or more of the operating systems when a single customer
exceeds a rental limit would unsatisfactorily modify Birkestrand because
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customers operating within their rental limits would not have access to the
operating systems that have been disabled (id.).
Appellants’ argument is based on the bodily incorporation of the
Mathias features into the Birkestrand system. Yet the test for obviousness is
not whether the features of one reference may be bodily incorporated into
the structure of another reference. Rather, the test is what the combined
teachings of those references would have suggested to a person of ordinary
skill in the art. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t
is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”). The Examiner
does not propose any bodily incorporation of Mathias into Birkestrand or
vice versa.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a).
Independent claims 8 and 15
Appellants argue that independent claims 8 and 15 are allowable for
“the same reasons that claim 1 is allowable” (App. Br. 10). We are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s
rejection of independent claims 8 and 15 under 35 U.S.C. § 103(a) for the
same reasons.
Dependent claims 2–7, 9–14, and 16–20
Each of claims 2–7, 9–14, and 16–20 depends from one of
independent claims 1, 8, and 15. Appellants do not present any arguments
for the separate patentability of the dependent claims except to argue that the
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claims are allowable based on their dependence on independent claims 1, 8,
and 15 (App. Br. 10–11).
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting claims 1, 8, and 15 under 35 U.S.C. § 103(a).
Therefore, we sustain the Examiner’s rejection of claims 2–7, 9–14, and 16–
20 for the same reasons.

DECISION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a)
are affirmed.
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

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