Ex Parte GRIFFITH et al

Patent Trial and Appeal Board

Feb 25, 2019

14543299 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/543,299 11/17/2014
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.
A US920 l 40270US 1 1522
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
Appeal2018-006163
Application 14/543,299 1
Technology Center 2100
Before HUNG H. BUI, JON M. JURGOVAN, 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 9--15 and 21-27, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM. 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 29, 2018; Final Office Action ("Final Act.")
mailed September 7, 2017; and original Specification ("Spec.") filed
November 17, 2014.
Appeal2018-006163
Application 14/543,299
STATEMENT OF THE CASE
Appellants' invention relates to "a technique for automating the
construction of multiple virtual images [ for interdependent applications]."
Spec. ,r 9; Abstract.
Claims 9--15 and 21-27 are pending on appeal. Claims 9 and 21 are
independent. Claim 9 is illustrative, as reproduced below with disputed
limitations in italics.
9. A computer program product for automating the
construction of multiple virtual images with interdependencies,
the computer program product, comprising:
a computer-readable storage device having computer-
readable program code embodied thereon, wherein the
computer-readable program code, when executed by a data
processing system, causes the data processing system to:
create 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;
create 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 J 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
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values include port names, host names, and repository names that
the interdependent first and second applications utilize; and
deploy the first and second VI instances to designated
virtual machines in a cloud environment for execution.
App. Br. 15 (Claims App.) (bracketing added).
Evidence Considered
Chen et al. ("Chen") US 2011/0265087 Al Oct. 27, 2011
Eilam et al. ("Eilam") US 2013/0086578 Al April 4, 2013
Matsubara et al. US 2014/0297597 Al Oct. 2, 2014
("Matsubara")
Bachu et al. ("Bachu") US 9,317,547 Bl Apr. 19, 2016
Dustin Amrhein ESTABLISH A SYSTEM TO Dec. 7, 2011
BUILD CUSTOM VIRTUAL
CLOUD IMAGES,
DeveloperW orks
Examiner's Rejections3
(1) Claims 9-11, 14, 15, 21-23, 26, and 27 stand rejected under
35 U.S.C. § 103 as being unpatentable over Eilam, Chen, and Bachu. Final
Act. 2-14.
(2) Claims 12 and 24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Eilam, Chen, Bachu, and Amrhein. Final Act. 14--15.
(3) Claims 13 and 25 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Eilam, Chen, Bachu, and Matsubara. Final Act. 15.
3 Claims 9-15 and 21-25 were also provisionally rejected on the ground of
non-statutory double patenting as being unpatentable over claims 1-7 of co-
pending Application No. 14/836,571. Final Act. 17. 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 14/543,299
ANALYSIS
In support of the obviousness rejection of claims 9 and 21, the
Examiner finds Eilam teaches Appellants' "computer program product for
automating the construction of multiple virtual images with
interdependencies" including the disputed limitations:
create 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
Final Act. 3-10 (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, 6-9 (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 limitations:
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Application 14/543,299
create 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
recited in claims 9 and 21. App. Br. 5-9; Reply Br. 2-7. 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. 6, 8 (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 claims 9 and 21.
Id. In addition, Appellants argue:
nowhere does Eilam describe[] 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:
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• 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
recited in claims 9 and 21. App. Br. 8; 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' claims 9 and 21 in the
Amendment filed on May 16, 2017 without an explanation of support from
Appellants' Specification. See Amendment filed May 16, 2017, claims 9
and 21. In the Appeal Brief, Appellants cite paragraphs 50, 56, and 59 of the
Specification as providing support for the disputed limitations. However,
Appellants' Specification does not describe how Appellants' claimed
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"second VI instance" is created by "selecting a second base VI that has
different characteristics than the first base VI" as recited in claim 9. 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 49, 55);
(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 50, 56)
( 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 50, 56) ( 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 50,
56, 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' claims 9 and 21, 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
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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 VI) to create the second VI. Ans. 11-12 (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 claims 9 and 21.
"The fact that [ A Jppellants 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 claims 9 and 21, and their respective dependent claims 10, 11,
14, 15, 22, 23, 26, and 27, which Appellants do not argue separately. App.
Br. 12.
With respect to claims 12, 13, 24, and 25, Appellants reiterate the
same arguments presented against Eilam. App. Br. 12-13. For the same
reasons discussed, we sustain the Examiner's rejection of claims 12, 13, 24,
and 25.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 9-15 and 21-27 under
35 U.S.C. § 103.
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DECISION
As such, we affirm the Examiner's final rejection of claims 9-15 and
21-27 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).
AFFIRMED
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