12419030 (P.T.A.B. Oct. 26, 2018)

Ex Parte Shlomai et al

Patent Trial and Appeal BoardOct 26, 2018

12419030 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/419,030 04/06/2009 95866 7590 10/30/2018 Fleit Gibbons Gutman Bongini & Bianco P.L. 4800 N. Federal Highway, Suite B306 Boca Raton, FL 33431 FIRST NAMED INVENTOR Netzer Shlomai 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. 49430-US-PAT 9753 EXAMINER HUDA, MOHAMMED NURUL ART UNIT PAPER NUMBER 2191 NOTIFICATION DATE DELIVERY MODE 10/30/2018 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): ptoboca@fggbb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NETZER SHLOMAI and YO RAM GABAY Appeal2017---011467 Application 12/419,030 1 Technology Center 2100 Before LARRY J. HUME, CARLL. SILVERMAN, and JOHN D. HAMANN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-9 and 12-20, which constitute all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 The real party in interest is identified as BlackBerry Limited. App. Br. 3. Appeal2017---011467 Application 12/419,030 STATEMENT OF THE CASE The invention relates to virtual software applications, and more particularly to a method for generating virtual software application files. Abstract, Spec. ,r,r 2, 20-23, Fig. 3. Claim 1, reproduced below, is exemplary of the subject matter on appeal ( emphasis added): 1. A method for virtualizing software applications, the method comprising: initializing a virtual environment created by a virtual engine executed over a computer; launching an installation process of a software application to be virtualized, wherein the installation process runs in the virtual environment; and capturing all data writes performed during the installation process and saving the captured data writes to a new data file, wherein the new data file, upon completion of the installation process, does not store an operating system. App. Br. 15-16 (Claims Appendix). THE REJECTIONS Claims 1-6, 9, and 15-17 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Vrhel Jr. (US 2009/0144725 Al; pub. June 4, 2009) ("Vrhel"), Cooper et al. (US 6,854,061 B2; iss. Feb. 8, 2005) ("Cooper"), and Noonan, III (US 2009/0198731 Al; pub. Aug. 6, 2009) ("Noonan"). Final Act. 3-10. Claims 7, 8, 12-14, and 18-20 are rejected under pre-AIA 35 Â§ U.S.C. Â§ I03(a) as being unpatentable over the combination of Vrhel, Cooper, Noonan, and Gentil et al. (US 2007/0113069 Al; pub. May 17, 2007) ("Gentil"). Final Act. 10-16. 2 Appeal2017---011467 Application 12/419,030 ANALYSIS Appellants argue, inter alia, that the Examiner errs in finding the combination of Vhrel, Cooper, and Noonan teaches the claim 1 limitation wherein the new data file, upon completion of the installation process, does not store an operating system. App. Br. 6-10; Reply Br. 2-5. According to Appellants, Vhrel teaches away from this limitation ( also referred to the "disputed limitation") and, therefore, one of ordinary skill in the art would not combine these references as suggested by the Examiner. Id. The Examiner finds the combination of Vhrel and Cooper teaches the claim 1 limitations, except the disputed limitation, and finds Noonan teaches the disputed limitation. Final Act. 3-6. The Examiner finds one of ordinary skill in the art would combine these references: A person having ordinary skill in the art would have been motivated toward such a combination for providing a method for virtualizing software applications as taught by Vrhel by dynamically creating a trial software product from the software product by intercepting file system calls from the installation process as taught by Cooper, wherein the new data file [ child image], upon completion of the installation process, does not include [store] an operating system as taught by NOONAN, for not wasting space by storing duplicate files (please see NOONAN par [0013]). Vrhel, Cooper, and NOONAN, are analogous arts directed to installing software applications and their teachings operate the same way separately as in combination. One of ordinary skill in the art would be motivated to make the aforementioned combination with reasonable expectation of success. Id. at 6. Appellants argue Vhrel necessarily includes an operating system, referring to Figures 3 and 5 of Vhrel, because "[ w ]ithout the operating system, it would not be possible to 'boot customer OS', as required by step 3 Appeal2017---011467 Application 12/419,030 365 (or 560)." App. Br. 7. According to Appellants, every embodiment of Vrhel describes the operating system as one of the components that is installed by the virtual environment/machine. Id. at 8. Appellants argue Vrhel "repeatedly states that the system is only booted after the image is copied to the hard drive of the IHS" and "[n]owhere does Vrhel teach or suggest that it is even possible to boot the system before the image is copied to the hard drive." Id. ( citing Vhrel ,r,r 33, 40). Therefore, Appellants disagree with the Examiner's statement that the rejection is based "on embodiments [ of Vrhel] where the [software] components [ captured in the image] do not include an operating system." Id. (citing Final Act. 19). Appellants argue Vhrel teaches that "'pre-installing an operating system (OS) and other software as a base layer' is a disadvantageous solution to the problem of reducing IHS assembly time, and therefore an alternative solution is needed that does not suffer from the same drawbacks." Id. at 8-9 (citing Vrhel ,r,r 6, 8). Appellants then argue "Vrhel teaches AW A Y from solutions that involve pre-installing an operating system" and "[ w ]hen the prior art teaches away from combining certain known elements, discovery of successful means of combining them is more likely to be nonobvious." Id. at 9 (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)). In the Answer, the Examiner finds Vrhel does not require an operating system to be part of the captured image because Vrhel teaches: In the software installation step 330, software devices or elements such as the operating system (OS), drivers, patches, programs/application, or the like are installed on a virtual environment/machine 335. Software devices may be installed on a virtual disk according to specific requirements or settings in a customer's order .... " enabling a person having ordinary skill in the art at the time the invention was made to choose software 4 Appeal2017---011467 Application 12/419,030 elements such as the operating system (OS), drivers, patches, programs/application, or the like according to specific requirements or settings in a customer's order. Ans. 18-19. The Examiner finds Noonan teaches a child image ( new data image) that contains only the difference between the parent, which includes an operating system, and the child image. Id. at 19. (citing Noonan ,r,r 105- 107, 70-73; Figs. 7, 9, and 10). In the Reply Brief, Appellants argue the Examiner errs in not considering Vrhel's teachings as a whole, which teach away from the disputed limitation. Reply Br. 3 ( citing MPEP Â§ 214.02 (VI); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)). According to Appellants, Vrhel criticizes and discourages the disputed limitation and "[b ]y presenting such disadvantages, it is clear that Vrhel is criticizing and discouraging solutions that involve pre-installing an operating system" and thus Vrhel is teaching away from the disputed limitation. Id. at 4. (Emphasis omitted). Appellants then argue any modification of Vrhel to incorporate the disputed limitation is improper because Vrhel teaches away from this feature. Id. at 3-5 ( citing Vhrel ,r,r 6, 8, 31, 33, and 40). We are persuaded by Appellants' arguments that one of ordinary skill in the art would not have combined the references as suggested by the Examiner, because Vhrel teaches away from such a combination. We agree that Vhrel teaches away from pre-installing an operating system and, instead, utilizes an installed operating system in the virtualization process. It is the pre-installed operating system on the actual system (e.g., computer) that enables the disputed limitation wherein the new data file, upon 5 Appeal2017---011467 Application 12/419,030 completion of the installation process, does not store an operating system. See Spec. ,r,r 20-30; Figs. 20-30. In view of the above, we do not sustain the rejection of claim 1, and independent claim 9 which is commensurate in scope. We also do not sustain the rejection of dependent claims 2-8 and 12-20. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious ... "). Because our decision with regard to the disputed limitation is dispositive of the rejections, we do not address additional arguments raised by Appellants. DECISION We reverse the Examiner's decision rejecting claims 1-9 and 12-20 under 35 U.S.C. Â§ 103(a). REVERSED 6