Ex Parte Melander et al

Patent Trial and Appeal Board

Feb 27, 2018

13704025 (P.T.A.B. Feb. 27, 2018)

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.
13/704,025 04/16/2013 Bob Melander 0110-534/P31303 US1 8417
113648 7590 03/01/2018
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
EXAMINER
DASCOMB, JACOB D
ART UNIT PAPER NUMBER
2199
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
Mailroom@ppblaw.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOB MELANDER and JAN-ERIK MANGS1
Appeal 2017-006263
Application 13/704,025
Technology Center 2100
Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
1 Appellants name Telefonaktiebolaget L M Ericsson (publ) as the real party
in interest. App. Br. 2.
Appeal 2017-006263
Application 13/704,025
INTRODUCTION
Appellants request rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed December 15, 2017 (“Decision”), in which we
affirmed the rejection of claims 1—20 under 35 U.S.C. § 103(a) as being
unpatentable over Clark (US 2010/0257269 Al, Oct. 7, 2010) and Yang
(US 2009/0183152 Al, July 16, 2009) in combination with various other
prior art (see Final Act. 3—11).
ANALYSIS
In the Request for Rehearing (“Request”), Appellants allege:
(1) “the Board overlooked the arguments regarding Yang” (Req. 1); and
(2) the Examiner interpretation of “‘Clark’s . . . selecting processes[,] which
will be offloaded to another VM,’ as being equivalent to Appellants’
‘dividing’ step is incorrect because Clark only terminates processes after
cloning the VM to another server” (Req. 4). We disagree.
Regarding (1) supra, Appellants reproduce the arguments pertaining
to Yang from the Appeal Brief (see Req. 1 4). Although Appellants are
correct in that numerous arguments were made regarding Yang in the
Appeal Brief, in writing our Decision we accepted that the Examiner
changed the thrust of the rejection in the Answer by relying predominantly
on Clark, not Yang, for the limitations argued/reproduced (see Ans. 16), thus
rendering Appellants’ reproduced arguments regarding Yang moot. As
such, our Decision properly reflects the most recent Examiner’s findings and
Appellants’ contentions pertaining thereto.
Specifically, the Examiner finds that “Yang is not cited for the
purpose of explicitly teaching splitting a VM; rather, Yang is cited for the
2
Appeal 2017-006263
Application 13/704,025
specific teaching of splitting VM tasks .... [T]he Examiner finds that Clark
may anticipate the broadest reasonable interpretation of claim 1, Yang is
cited for further clarity regarding the specific aspect of splitting tasks”
(Ans. 16). In other words, the Examiner is now treating Clark as an
anticipatory reference, only adding Yang for clarification on dividing tasks.
See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled
that anticipation is the epitome of obviousness.”) (internal quotation
omitted).
Appellants could have filed a petition under 37 C.F.R. § 1.181(a)
requesting that a ground of rejection set forth in the Answer be designated as
a new ground of rejection (see MPEP § 1207.03 IV), if they felt that such
findings constituted new grounds of rejections. Because Appellants did not
timely raise the issue by filing a petition, Appellants have waived any
potential argument that the Examiner’s Answer contained an improper
undesignated new ground of rejection.
Regarding (2) supra, i.e., Appellants’ contention—i.e., the Examiner’s
interpretation of‘“Clark’s . . . selecting processes[,] which will be offloaded
to another VM,’ as being equivalent to Appellants’ ‘dividing’ step is
incorrect because Clark only terminates processes after cloning the VM to
another server” (Req. 4), we highlight that we addressed this contention in
our Decision (see Decision 5). Specifically, we found that Clark’s “selection
‘effectively segregates those processes from the rest of the processes
executing on the VM, which meets the Appellants’ dictionary definition of
‘dividing’” (id.). We find Appellants’ contention that “Clark only
terminates processes after cloning the VM to another server” (see Req. 4)
unpersuasive of error because the Examiner, and our Decision, relied upon
3
Appeal 2017-006263
Application 13/704,025
Clark’s “selection” step, i.e., selection of processes running on the first VM
to be offloaded, to read on the claimed “dividing,” not Clark’s subsequent
“terminating” step.
DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision, but we have DENIED the
Request with respect to making any changes to the Decision.
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).
REHEARING DENIED
4