Ex Parte GRIFFITH et al

Patent Trial and Appeal Board

Feb 22, 2019

14836571 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/836,571 08/26/2015
87220 7590 02/25/2019
Walder Intellectual Property Law (END)
C/0 Walder Intellectual Property Law, P.C.
17304 Preston Road
Suite 200
Dallas, TX 75252
FIRST NAMED INVENTOR
JOHN A. GRIFFITH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AUS920140270US2 5491
EXAMINER
KNIGHT, PAUL M
ART UNIT PAPER NUMBER
2139
MAIL DATE DELIVERY MODE
02/25/2019 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 JOHN A. GRIFFITH, JOSEPH P. LOEWENGRUBER, DANIEL
P. RHAMES, PHILIP R. RIEDEL, and SANDRA L. TIPTON
Appeal 2018-006135
Application 14/836,571 1
Technology Center 2100
Before HUNG H. BUI, JON M. WRGOV AN, and PHILLIP A. BENNETT,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-7, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
February 2, 2018; Reply Brief ("Reply Br.") filed May 24, 2018; Examiner's
Answer ("Ans.") mailed March 28, 2018; Final Office Action ("Final Act.")
mailed September 6, 2017; and original Specification ("Spec.") filed August
26, 2015.
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Application 14/836,571
STATEMENT OF THE CASE
Appellants' invention relates to "a technique for automating the
construction of multiple virtual images [ for interdependent applications]."
Spec. ,r 10; Abstract.
Claims 1-7 are pending on appeal. Claim 1 is illustrative, as
reproduced below with disputed limitations in italics.
1. A method to automate the construction of multiple virtual
images with interdependencies, comprising:
creating, using a data processing system, a first virtual
image (VI) instance by selecting a first base VI and then
extending the first base VI based on first input instance values
associated with the first base VI and software bundles associated
with the first base VI, wherein the first input instance values
include one or more of a host name, a port name, a repository
name, user names, and user passwords associated with the first
base VI;
creating, using the data processing system, a second VI
instance by selecting a second base VI that has different
characteristics than the first base VI and then extending the
second base VI based on [ 1] second input instance values
associated with the second base VI, [2] the first input instance
values received from the first VI instance, [3] dependency
instance values received from a deployed dependency instance,
and [ 4] software bundles associated with the second base VI,
wherein the first VI instance includes a first application that
accesses information associated with and as such depends on a
second application of the second VI instance, the second input
instance values include one or more of a host name, a port name,
a repository name, user names, and user passwords associated
with the second base VI, and the dependency instance values
include port names, host names, and repository names that the
interdependent first and second applications utilize; and
deploying, using the data processing system, the first and
second VI instances to designated virtual machines in a cloud
environment for execution.
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Application 14/836,571
App. Br. 13 (Claims App.) (bracketing added).
Evidence Considered
Chen et al. ("Chen") US 2011/0265087 Al
Dorai et al. ("Dorai") US 2012/0192175 Al
Eilam et al. ("Eilam") US 2013/0086578 Al
Matsubara et al. US 2014/0297597 Al
("Matsubara")
Bachu et al. ("Bachu") US 9,317,547 Bl
Examiner's Rejections3
Oct. 27, 2011
July 26, 2012
April 4, 2013
Oct. 2, 2014
Apr. 19, 2016
(1) Claims 1--4, 6, and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Eilam, Chen, and Bachu. Final Act. 2-11.
(2) Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Eilam, Chen, Bachu, and Matsubara. Final Act. 11-12.
ANALYSIS
In support of the obviousness rejection of claim 1, the Examiner finds
Eilam teaches Appellants' "method to automate the construction of multiple
virtual images with interdependencies" including the disputed limitation:
creating, using the data processing system, a second VI instance
by selecting a second base VI that has different characteristics
3 Claims 1-7 were also provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 9-15 and 22-
27 of co-pending Application No. 14/543,299. Final Act. 14. However, the
rejection was withdrawn in response to a terminal disclaimer filed on
February 2, 2018 and, as such, is no longer pending on appeal.
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Application 14/836,571
than the first base VI and then extending the second base VI
based on [ 1] second input instance values associated with the
second base VI, [2] the first input instance values received from
the first VI instance, [3] dependency instance values received
from a deployed dependency instance, and [ 4] software bundles
associated with the second base VI.
Final Act. 3-9 ( citing Eilam ,r,r 30, 32, 37).
To support the conclusion of obviousness, the Examiner relies on (1)
Chen for teaching "wherein the first input instance values include one or
more of a host name, a port name, a repository name, user names, and user
passwords associated with the first base VI" and (2) Bachu for teaching
"wherein the first VI instance includes a first application that accesses
information associated with and as such depends on a second application of
the second VI instance." Final Act. 4, 6-7 (citing Chen ,r 70; Bachu 7:45-
8:6).
Appellants do not dispute the Examiner's factual findings regarding
Chen and Bachu. Nor do Appellants challenge the Examiner's reason to
combine the references. Instead, Appellants dispute the Examiner's factual
findings regarding Eilam. In particular, Appellants argue Eilam does not
teach the disputed limitation:
creating, using the data processing system, a second VI instance
by selecting a second base VI that has different characteristics
than the first base VI and then extending the second base VI
based on [ 1] second input instance values associated with the
second base VI, [2] the first input instance values received from
the first VI instance, [3] dependency instance values received
from a deployed dependency instance, and [ 4] software bundles
associated with the second base VI
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Application 14/836,571
recited in claim 1 ( emphasis added). App. Br. 6-8; Reply Br. 2---6.
According to Appellants, Eilam only teaches "virtual image construction,"
including:
a process where a first virtual image is created by extending a
first base virtual image based on first input instance values
associated with the first base virtual image and software bundles
associated with the first base virtual image. Then, the first image
is re-used and new software bundles are added to create a
second virtual image. Therefore, in creating the second virtual
image, Eilam reuses the first base virtual image of the first
virtual image to create the second virtual image.
App. Br. 5-7 (citing Eilam ,r,r 30, 32); Reply Br. 2. In other words,
Appellants acknowledge Eilam teaches modifying a "first base VI" into a
"first VI instance" and re-using the created first VI instance as a "second
base VI" to further create a "second VI instance." Reply Br. 4. However,
Appellants argue Eilam's reuse of the first VI instance as "a second base VI"
to create a "second VI instance" is not the same as Appellants' claimed
"second VI instance" created by "selecting a second base VI that has
different characteristics than the first base VI" as recited in claim 1. Id. In
addition, Appellants argue:
nowhere does Eilam describes creating a second virtual image
instance by selecting a second base virtual image that has
different characteristics than the first base virtual image and
then extending the second base virtual image based on:
• second input instance values associated with the second
base VI,
• the first input instance values received from the first VI
instance,
• dependency instance values received from a deployed
dependency instance, and
• software bundles associated with the second base VI
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recited in claim 1. App. Br. 7; Reply Br. 5.
Appellants' arguments are not persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by a preponderance of evidence. Ans. 3-12. Therefore, we adopt
the Examiner's findings and explanations provided therein. Id. For
additional emphasis, we note claim terms, during prosecution, are given their
broadest reasonable interpretation consistent with the specification. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Under
the broadest reasonable interpretation, claim terms are given their ordinary
and customary meaning, as would be understood by one of ordinary skill in
the art in the context of the entire disclosure. In re Trans logic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
The phrase "second base VI that has different characteristics than the
first base VI" is not defined or even described in Appellants' Specification.
Instead, the phrase was added to Appellants' claim 1 in the Amendment filed
on May 16, 2017 without an explanation of support from Appellants'
Specification. See Amendment filed May 16, 2017, claims 1-2. In the
Appeal Brief, Appellants cite paragraphs 50, 56, and 59 of the Specification
as providing support for the disputed limitation. However, Appellants'
Specification does not describe how Appellants' claimed "second VI
instance" is created by "selecting a second base VI that has different
characteristics than the first base VI" as recited in claim 1. Instead,
Appellants' Specification only describes:
(1) "system 400 [ shown in Fig. 4] to automate the construction of
multiple VIs that have interdependencies" (Spec. ,r,r 50, 56);
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(2) "[ w ]hen the VI building process is initiated, a first base VI (labeled
'VI 1 ') 410 is extended with input instance values (e.g., host name,
port name, repository name, user names, and user passwords, etc.
associated with base VI 410), and software bundles (e.g.,
applications that are utilized in first base VI 410) are added to first
base VI 410 to create a first VI instance 420" (Spec. ,r,r 51, 57)
( emphasis added); and
(3) "[s]econd base VI 412 is extended (using associated input instance
values, the instance values from first VI instance 420, and
dependency instance values from deployed dependency instance
406) and software bundles (which install and configure second
base VI 412) are added to create a second VI instance (labeled 'VI
2 instance') 422" (Spec. ,r,r 51, 57) (emphasis added).
According to Appellants' Specification, the claimed "second VI
instance" is created by way of a second base VI 412, shown in Figure 4,
using, inter alia, the instance values from first VI instance 420. Spec. ,r,r 51,
57, 60. In other words, Appellants' claimed "second VI instance" is created
in part by reusing the "first VI instance."
As recognized by the Examiner, Appellants' Specification does not
describe any structural or functional difference between "a base VI" and "a
VI instance." Ans. 3, 6-7. Based on Appellants' Specification and the
broad wording of Appellants' claim 1, we agree with the Examiner that the
phrase "second base VI that has different characteristics than the first base
VI" can be broadly, but reasonably interpreted to encompass Eilam's (1)
"focus on both software bundles [based on requirement dependencies,
operational dependencies, and parameter relationships] and images as
artifacts to be shared and re-used" and (2) "images [] re-used as a basis to
add new bundles to create new images [in different platforms and clouds],"
that is, Eilam's reuse of the first base VI of the first VI (use of the same base
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VI) to create the second VI. Ans. 12 (citing Eilam ,r 32). For example, once
Eilam' s second VI is created, the second base VI is different from the first
base VI to meet Appellants' claimed "second base VI that has different
characteristics than the first base VI" recited in claim 1.
"The fact that [ A ]ppellants can point to definitions or usages that
conform to their interpretation does not make the PTO' s definition
unreasonable when the PTO can point to other sources that support its
interpretation." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
For the above reasons, we sustain the Examiner's rejection of
independent claim 1 and dependent claims 2--4, 6, and 7, which Appellants
do not argue separately. App. Br. 10-11.
With respect to claim 5, Appellants reiterate the same arguments
presented against Eilam. App. Br. 11. For the same reasons discussed, we
sustain the Examiner's rejection of claim 5.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-7 under
35 U.S.C. § 103.
DECISION
As such, we affirm the Examiner's final rejection of claims 1-7 under
35 U.S.C. § 103.
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).
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AFFIRMED
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