Ex Parte Eidus et al

Patent Trial and Appeal Board

Apr 19, 2017

13426861 (P.T.A.B. Apr. 19, 2017)

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.
13/426,861 03/22/2012 Izik Eidus R00132NP 4189
129668 7590
Invoke / Oracle
c/o CPA Global
900 Second Avenue South, Suite 600
Minneapolis, MN 55402
EXAMINER
SWIFT, CHARLES M
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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 @ InvokeIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IZIK EIDUS, LEONID SHATZ, MICHAEL RAPOPORT, and
ALEXANDER FISHMAN
Appeal 2016-007946
Application 13/426,8611
Technology Center 2100
Before SCOTT B. HOWARD, JOHN D. HAMANN, and ALEX S. YAP,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6—11, 13, 14, 16, and 17, which constitute all
of the claims pending in this application. Claims 5, 12, 15, and 18—23 have
been cancelled. App. Br. 19-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Ravello Systems LTD. as the real party in interest.
App. Br. 3.
Appeal 2016-007946
Application 13/426,861
THE INVENTION
The disclosed and claimed invention is directed to a system and
method thereof for running an unmodified guest operating system in a para-
virtualized environment. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus operating in a para-virtualized environment,
comprising:
a processor; and
a memory coupled to the processor and configured to store
at least a first set of instructions for a first hypervisor for
execution by the processor and a second set of instructions for a
second hypervisor for execution by the processor over the first
hypervisor, wherein the first hypervisor is configured to enable
execution of an unmodified guest program over the second
hypervisor, the second hypervisor configured to capture at least
a privileged instruction called by the unmodified guest program
and translate the at least privileged instruction to at least a
corresponding instruction of the first set of instructions
executable by the first hypervisor, wherein the unmodified guest
program and the second hypervisor operate in a user space
protection domain, and wherein the first hypervisor is a para-
virtualized hypervisor.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Weissman et al. (“Weissman”)
Dang et al. (“Dang”)
Yehuda et al. (“Yehuda”)
Day, II et al. (“Day”)
US 2010/0257524 Al
US 2011/0047542 Al
US 2011/0047544 Al
US 2011/0072428 Al
Oct. 7,2010
Feb. 24, 2011
Feb. 24, 2011
Mar. 24, 2011
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Application 13/426,861
REJECTIONS
Claims 1—4, 6, 7, 9-11, 14, 16, and 17 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Day in view of Dang and
Weissman. Final Act. 3—14.
Claims 8 and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Day in view of Dang, Weissman, and Yehuda.
Final Act. 14—16.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.2
We disagree with Appellants’ arguments with respect to claims 1—4, 6—11,
13, 14, 16, and 17, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 3—14) and (2) the reasons and rebuttals set forth
in the Examiner’s Answer in response to Appellants’ arguments (Ans. 3—6).
We incorporate such findings, reasons, and rebuttals herein by reference
unless otherwise noted. However, we highlight and address specific
findings and arguments for emphasis as follows.
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed Feb. 16, 2016);
the Reply Brief (filed Aug. 19, 2016); the Final Office Action (mailed May
20, 2015); and the Examiner’s Answer (mailed June 20, 2016) for the
respective details.
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Application 13/426,861
First, Appellants argue the Examiner erred in finding Day teaches a
hypervisor “configured to capture at least a privileged instruction called by
the unmodified guest program,” as recited in claim 1. App. Br. 6—7. More
specifically, Appellants argue “Day appears to relate only to particular
privileged instructions, such as VMREAD and VMWRITE instructions, and
not to privilege instructions in general.” App. Br. 7.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Claim 1 recites that “the second hypervisor configured to capture at
least a privileged instruction called by the unmodified guest program and
translate the at least privileged instruction . . . .” App. Br. 18 (emphasis
added). The Examiner concludes, and we agree, that the broadest reasonable
construction of the claim does not require all privileged instructions to be
captured. See Ans. 3. Instead, the claim only requires one privilege
instruction to be captured. Because Appellants’ arguments are not
commensurate with the scope of the claims, they are unpersuasive. See In re
Self 671 F.2d 1344, 1348 (CCPA 1982).
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Second, Appellants argue the Examiner erred in finding Day teaches
“the second hypervisor configured to capture at least a privileged
instruction called by the unmodified guest program,’ '’ as recited in claim 1.
App. Br. 18 (emphasis added). App. Br. 7—8; Reply 2-4. According to
Appellants, Day teaches privileged commands issues by the hypervisor, not
the guest program. App. Br. 8 (“In direct contrast, Day teaches that it is the
secondary VMM, not the unmodified guest, that issues the privileged
instruction, and such an instruction is captured in Day by the primary VMM
30 and not the second hypervisor, as required by claim 1.” (emphasis
omitted)); Reply Br. 2 (“Specifically, the Examiner relies on the privileged
instructions ‘VMREAD and VMWRITE issued by the secondary VMM.’”
(emphasis omitted) (quoting Day 126)).3 * 5
The Examiner finds “Day figure 1 shows a nested VMM structure
wherein a guest program runs on a VM (secondary VM 36) which is
encapsulated on top of the a [sic] VMM (secondary VMM 34).” Ans. 4; see
also Final Act. 4—6. The Examiner further finds:
one of ordinary skill in the art can readily recognize that a core
function of a VMM is to receive a privileged instruction issued
by its guest, process those privileged instructions (either through
trap and emulate, or through binary translation) and pass it down
to the layer below, and thus similar functionality would be
present on the secondary VMM to process privileged instructions
issued by its guest (secondary VM 36).
Ans. 4.
3 In Day, VM refers to a virtual machine and VMM refers to virtual machine
monitor. See Day 119. Because the Examiner and Appellants use the same
nomenclature in describing the prior art, so do we.
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Day teaches a guest program 38 operating over a secondary VMM 34
and a primary VMM 30. Day Fig. 1. Although Day further teaches the
secondary VMM issues privileged commands VMREAD and VMWRITE,
we agree with the Examiner that a person of ordinary skill would understand
that guest program 38 provides those instructions. See In re Preda, 401 F.2d
825, 826 (CCPA 1968) (holding “it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom”); In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that prior art references must
be “considered together with the knowledge of one of ordinary skill in the
pertinent art”). Accordingly, we are not persuaded by Appellants’ argument
that the Examiner erred.
Third, Appellants argue the Examiner admitted Day does not teach a
second hypervisor “configured to . . . translate the at least privileged
instruction to at least a corresponding instruction of the first set of
instructions executable by the first hypervisor.” See App. Br. 8—12.
According to Appellants, translation of privileged commands is not a core
function of a VMM and that it has a number of disadvantages, including the
use of substantial overhead. Id. For the same reason, Appellants argue the
Examiner did not properly take Official Notice based on Weissman. Id.
The Examiner finds Weissman teaches that “[bjinary translation is a
core feature of VMM, which is used to trap privileged instructions issued by
its guest and translate it to a version that can be executed by its host.” Final
Act. 5 (citing Weissman || 52—56); see also Ans. 4 (“Weissman reference
was further introduced to support the examiner's assertion that binary
translation and trap and emulate are core functions of the VMM.”). Based
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on the teaching of Weissman, the Examiner takes Official Notice that “it
would be obvious for one of ordinary skill in the art to know the same
technic [sic] can be applied to a nested virtualization setup as taught by
Day.” Final Act. 5.
Weissman teaches that binary translation can be used to translate a
guest instruction “into one or more instructions.” Weissman H 52—53.
Weissman further teaches that the translations can be stored for “immediate
recall” and to “mitigate [against] the decreased performance that binary
translation typically causes.” Weissman | 53. Although both the Examiner
and Appellants focus on whether or not binary translation is a core function
of a VMM, binary translation is a function of the VMM taught by the prior
art of record. Because the prior art teaches a VMM with that feature, we
need not decide whether or not it is a core function.
Furthermore, Appellants have not identified a claim limitation
associated with the amount of overhead used by the VMM. Because
Appellants’ arguments directed to the substantial overhead used by binary
translation is not commensurate with the scope of the claims (see Ans. 5),
we are not persuaded that the Examiner erred. See Self, 671 F.2d at 1348.
Fourth, Appellants argue that neither Weissman nor Dang teach or
suggest the specific pair of hypervisors recited in claim 1. App. Br. 12
(“Furthermore, Weissman does not deal with the case of an ordinary VMM
and paravirtual VMM. Therefor[e,] even if, for the sake of argument, the
Examiner’s logic was correct, which Appellants are not admitting, it would
not apply with regard to the instant claims.” (emphasis omitted)); App. Br.
13 (“As an initial point, Dang does not appear to have more than one
hypervisor, so Dang cannot teach a second hypervisor, as required by
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Application 13/426,861
Appellants’ claim 1.” (emphasis omitted)). Appellants also argue Dang does
not teach or suggest an unmodified guest program. App. Br. 13.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellants’ arguments are directed to the
references individually—that is the arguments are not directed to the
limitations that the Examiner cited the prior art for—we are not persuaded
by the arguments that the Examiner erred.
Finally, Appellants argue “one of ordinary skill in the art would not
be motivated to make the combination.” App. Br. 13. More specifically,
Appellants argue the prior art “taken as a whole, would have led one skilled
in the art away from the combination relied upon by an Examiner.” App. Br.
14. According to Appellant:
Day is directed to solving a problem with particular privilege
instructions when hypervisors are nested. Dang is directed to
security issues with hypervisors, and in particular with para-
virtual hypervisors. Weissman is directed to wasted resources
when many virtual machines on a hardware platform are idle.
As can be seen, none of the references are directed to the
problem recognized by Appellants’ that the advantages of para-
virtualization are counterbalanced by the disadvantages thereof.
Nor are any of the references directed to employing the
advantages of para-virtualization while still not requiring a
modification of the guest. There is also no suggestion to
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Application 13/426,861
combine the piece parts selected by the Examiner in the manner
claimed by Appellants.
App. Br. 14-15.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). The Examiner finds a reason to combine the various elements of the
prior art. See Final Act. 5—6 (reason for modifying Day in light of
Weissman), 6—7 (reason for modifying Day in light of Dang); see also Ans.
6 (reason for modifying Day in light of Dang). We agree with and adopt the
Examiner’s findings, which provide an articulated reasoning with rational
underpinnings to support the legal conclusion of obviousness.
We further determine that Appellants’ arguments directed to the
reasoning are legally insufficient. First, we find Appellants have not
established that the prior art teaches away from the claimed invention.
Specifically, Appellants have not demonstrated that “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).
Appellants merely describe the preferred embodiments of the prior art.
However, a preferred embodiment, by itself, “does not teach away. . . [as] it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
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567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). In other words, such a stated preference is
insufficient to teach away from the claimed invention. See id.', Fulton, 391
F.3d at 1201.
Second, our reviewing court guides it is irrelevant that the prior art
and the present invention may have different purposes. See Nat 7 Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A
finding that two inventions were designed to resolve different problems . . .
is insufficient to demonstrate that one invention teaches away from
another.”). That is, it is sufficient that references suggest doing what an
appellant did, although the appellant’s particular purpose was different from
that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983)
(citing In re Gershon, 372 F.2d 535, 538—39 (CCPA 1967)). “Obviousness
is not to be determined on the basis of purpose alone.” In re Graf, 343 F.2d
774, 111 (CCPA 1965).
Accordingly, we are not persuaded by Appellants’ arguments that the
Examiner erred in combining the teachings of the prior art references.
For the reasons given above, we sustain the Examiner’s rejection of
claim 1, along with the rejection of claim 10, which is argued on the same
grounds (App. Br. 15), along with the rejection of dependent claim s 2-4, 6,
7, 9, 11, 14, 16, and 17 (id).
With respect to dependent claims 8 and 13, Appellants contend that
because the additional reference used in the rejection of those claims
(Yehuda) do not cure the shortcomings of the other references applied
against claims 1 and 10, the Examiner failed to make a prima facie case of
obviousness for these claims. App. Br. 16. Because we determine that the
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rejections of claims 1 and 10 are not erroneous for the reasons discussed
above, we sustain the rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—4, 6—11, 13, 14, 16, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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