12390598 (P.T.A.B. Mar. 30, 2017)

Ex Parte Ferris

Patent Trial and Appeal BoardMar 30, 2017

12390598 (P.T.A.B. Mar. 30, 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. 12/390,598 02/23/2009 James Michael Ferris 0040.0731 5426 14400 7590 03/30/2017 Patent Docket Administrator LOWENSTEIN SANDLER LLP 65 Livingston Avenue Roseland, NJ 07068 EXAMINER HOANG, HIEU T ART UNIT PAPER NUMBER 2452 MAIL DATE DELIVERY MODE 03/30/2017 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 JAMES MICHAEL FERRIS ____________________ Appeal 2016-000508 Application No. 12/390,5981 Technology Center 2400 ____________________ Before MARC S. HOFF, LARRY J. HUME, and SCOTT B. HOWARD, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1–4, 6–11, and 13–21.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s invention is a cloud computing environment configured to allow third party, user-controlled resources to be included in the pool of resources available in the cloud. A cloud management system can identify a particular type of management system supporting the user-controlled resources and the commands necessary to communicate with the particular 1 The real party in interest is Red Hat, Inc. 2 Claims 5 and 12 have been cancelled. Appeal 2016-000508 Application 12/390,598 2 type of management system. The cloud management system can then communicate with the particular type of management system to coordinate access to the user-controlled resources. See Abstract. Claim 1 is exemplary of the claims on appeal: 1. A method, comprising: storing, in a memory, a plurality of management records, wherein each management record comprises a management system type and a command for communicating with a management system associated with the management system type; receiving a request to include a user-controlled resource in a cloud; identifying, by a processor, a management system supporting the user-controlled resource; identifying, among the plurality of management records, a management record corresponding to the management system; retrieving, from the management record, a command to cause the user-controlled resource to be included in the cloud; and communicating the command to the management system. The Examiner relies upon the following prior art in rejecting the claims on appeal: Fatula, JR. US 2005/0131898 A1 June 16, 2005 Stienhans et al. US 2010/0042720 A1 Feb. 18, 2010 Claims 1–4, 6–11, and 13–21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fatula and Stienhans. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed May 18, 2015), the Reply Brief (“Reply Br.,” filed Oct. 2, 2015), and the Examiner’s Answer (“Ans.,” mailed Aug. 3, 2015) for their respective details. Appeal 2016-000508 Application 12/390,598 3 ISSUES Appellant’s arguments present us with the following issues: 1. Does the combination of Fatula and Stienhans teach or fairly suggest storing, in a memory, a plurality of management records, wherein each management record comprises a management system type and a command for communicating with a management system associated with the management system type? 2. Does the combination of Fatula and Stienhans teach or fairly suggest retrieving, from the management record, a command to cause the user-controlled resource to be included in the cloud? 3. Did the Examiner articulate reasoning having a rational underpinning for combining Fatula with Stienhans? PRINCIPLES OF LAW The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under either 35 U.S.C. §§ 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed a 35 U.S.C. § 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983); and see PAR Pharmaceutical, Inc. v TWI Pharmaceuticals, Inc. (Fed Cir, 2014-1391, Dec. 3, 2014).3 3 The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). Appeal 2016-000508 Application 12/390,598 4 The primary issues in inherent obviousness are: (1) whether the inherent feature is known in the art at the time of invention; (2) whether the inherent feature is needed to provide motivation to combine; (3) whether a reasonable expectation of success requires knowledge of the inherent element; and (4) whether the inherent element was claimed structurally or functionally. The ultimate question in an inherent obviousness rejection is whether the benefit is predictable based on what was known in the art at the time of the invention. If, at the time of the invention, one could not have predicted the outcome based on the knowledge in the art, there is no inherent obviousness, and hence, no prima facie case of obviousness. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). ANALYSIS In the context of § 103, we are not persuaded by Appellant’s argument that Stienhans fails to disclose “storing, in a memory, a plurality of management records, wherein each management record comprises a management system type and a command for communicating with a management system associated with the management system type,” as recited in each independent claim (1, 8, and 15). See App. Br. 7; Final Act. 4. Appellant’s contention that Stienhans does not inherently disclose the claim limitation at issue does not persuade us of Examiner error. The Examiner finds that Stienhans discloses that “each of [the] plurality of adapters [42, 44, 46, 48] is a management record of a plurality of commands Appeal 2016-000508 Application 12/390,598 5 and a cloud type to convert the commands to and from the cloud.” Final Act. 4–5; see Stienhans Fig. 4. We agree with the Examiner’s finding that “a cloud adapter stores necessarily a table/record/mechanism for analyzing and translating the command from the user to commands compatible with a specific cloud used for resource provisioning.” Final Act. 5. Given Stienhans’ disclosure of analyzing and translating commands from a user into commands compatible with a specific system, we find that a memory is necessarily present, in which is stored a plurality of “translations” between commands in one format or language and commands in another format or language. See Ans. 4. For similar reasons, we do not agree with Appellant that Stienhans fails to disclose a management record that is stored in a memory, and consequently fails to disclose retrieving a command from the management record. See App. Br. 10. As explained supra, we agree with the Examiner’s finding that Steinhans inherently discloses the storage of management record(s), corresponding to the claim limitations, in a memory. Last, we do not agree with Appellant that the Examiner employed a “mere conclusory statement” as rationale for modifying Fatula in view of Stienhans. See App. Br. 12. We agree with the Examiner’s finding that modifying Fatula to include the plurality of management records stored in a memory, as inherently disclosed by Stienhans, facilitates the integration of multiple clouds through a single interface, utilizing adapter for third party clouds able to handle the intricacies of third-party service providers. The Examiner’s statement provides an articulated reason with a rational underpinning to support the legal conclusion of obviousness. See Final Act. 5; Ans. 5; Stienhans ¶¶ 7, 8. Appeal 2016-000508 Application 12/390,598 6 As we conclude that the Examiner did not err in rejecting independent claims 1, 8, and 15, or the respective claims dependent therefrom, over the combination of Fatula and Stienhans, we sustain the Examiner’s § 103 rejection of claims 1–4, 6–11, and 13–21. CONCLUSIONS 1. The combination of Fatula and Stienhans teaches or suggests storing, in a memory, a plurality of management records, wherein each management record comprises a management system type and a command for communicating with a management system associated with the management system type. 2. The combination of Fatula and Stienhans teaches or suggests retrieving, from the management record, a command to cause the user- controlled resource to be included in the cloud. 3. The Examiner articulated reasoning having a rational underpinning for combining Fatula with Stienhans sufficient to meet the requirements of KSR.4 ORDER The Examiner’s decision to reject claims 1–4, 6–11, and 13–21 is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 4 See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).