Ex Parte Trowbridge

Patent Trial and Appeal Board

Dec 21, 2016

12917216 (P.T.A.B. Dec. 21, 2016)

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.
12/917,216 11/01/2010 David Stephen TROWBRIDGE A570 1101
36378 7590
VMWARE, INC.
DARRYL SMITH
3401 Hillview Ave.
PALO ALTO, CA 94304
12/23/2016 EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
ipteam @ vmware. com
ipadmin@vmware.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEKAZU KANAYA
Appeal 2015-000516
Application 12/917,216
Technology Center 2100
Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1 through 3, 5 through 20, and 22
through 26, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-000516
Application 12/917,216
INVENTION
The invention is directed to a system for generating lists of virtual
machines. Spec. 5—7.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the invention and reproduced below:
1. In a computer system, a method for generating a
display list of virtual machines (VMs) that include VMs
running locally in the computer system and VMs running
remotely in one or more remote computer systems, the
method comprising:
detecting a user input event that specifies a search
criteria for VMs;
generating a list of VMs that meet the specified
search criteria, the VMs including one or more VMs that
are running locally in the computer system and ore or more
VMs that are running remotely in the remote computer
systems; and
displaying the list of VMs in a graphical user
interface (GUI)
wherein the displayed list of VMs has a tree
structure and each VM listing appears underneath the
computer system in which the corresponding VM has been
initialized; and
wherein detecting a user input event comprises
receiving a search criteria selection at a search interface
that is separate from the tree structure and that includes a
drop down menu of search targets.
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REFERENCES AND REJECTIONS AT ISSUE1
The Examiner rejected claims 1,3,5 through 7, 13, 16, 20, and 22—24
under 35 U.S.C. § 103(a) as being unpatentable over Fries (US
2008/0098309 Al; publ. Apr. 24, 2008) and Sherrill (US 2007/0240071 Al;
publ. Oct. 11, 2007). Final Act. 2—7.
The Examiner rejected claims 8, 12, 14, 15, 17, and 19 under 35
U.S.C. § 103(a) as being unpatentable over Fries, Sherrill, and Russell (US
7,653,878 Bl; Jan 26, 2010). Final Act. 7-10.
The Examiner rejected claims 2 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Fries, Sherrill, and Hodges (US 2008/0201709 Al;
Aug. 21, 2008). Final Act. 10-11.
The Examiner rejected claims 9, 18, and 26 under 35 U.S.C. § 103(a)
as being unpatentable over Fries, Sherrill, Russell, and Hodges. Final
Act. 11-12.
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Fries, Sherrill, Hodges, and Kreft
(US 2009/0327071 Al; publ. Dec. 31, 2009). Final Act. 12-13.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
1 Throughout this Opinion we refer to the Appellant’s Appeal Brief, filed
May 12, 2014 (“App. Br.”), Reply Brief, filed September 29, 2014 (“Reply
Br.”), the Final Office Action, mailed October 21, 2013 (“Final Act.”), and
the Examiner’s Answer, mailed on July 29, 2014 (“Ans.”).
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Application 12/917,216
Examiner’s rejection of claims 1 through 3, 5 through 20, and 22 through 26
under 35 U.S.C. § 103(a).
Claim 1
Appellant argues that the Examiner erred in rejecting claim 1 because
Sherrill fails to teach a tree-structured list of virtual machines that is updated
in response to a search criteria selected from a drop down menu of search
targets. App. Br. 7—10; Reply Br. 3. The Examiner in response to
Appellant’s arguments provided a detailed analysis, finding that Fries
teaches a tree structure, where the user is able to perform a search, and the
tree structure is updated subsequently. Answer 3 (citing Fries, para. 20 and
Figure 2). Further, the Examiner finds that Sherrill teaches a search interface
including a drop down menu of search targets that is separate from the tree
structure and, when combined with Fries, teaches the claimed feature of
updating the tree structure in response to receiving user input to a search
interface. We concur with the Examiner’s findings and conclusions and are
not persuaded of error by Appellant’s arguments, which only focuses on one
of the references in the rejection. Further, in as much as Appellant’s
argument are directed to the combined teaching not teaching “updating,”
while we concur with the Examiner’s findings that the combined references
teach “updating,” this argument is not persuasive also because “updating” is
not recited in claim 1.
We note that Appellant asserts, for the first time in the Reply Brief,
that the Examiner failed to establish a prima facie case of obviousness based
upon the combination of Fries and Sherrill to reject claim 1. See Reply
Br. 2—5. Appellant has not shown good cause as to why these arguments
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Application 12/917,216
could not be presented earlier. As such, these arguments have not been
considered, and are waived. See Ex parte Borden, 93 USPQ2d 1473, 1473—
74 (BPAI 2010) (informative) (absent a showing of good cause, the Board is
not required to address arguments in Reply Brief that could have been
presented in the principal Appeal Brief); 37 C.F.R. §41.41(b)(2).
Accordingly, we sustain the Examiner’s rejection of independent claim 1.
Claims 8 and 16
On pages 15 through 17, and 10 through 12 of the Appeal Brief,
Appellant presents the same arguments as presented with respect to claim 1
asserting the Examiner’s rejection of claims 8 and 16 (respectively) are in
error. Claims 8 and 16 differs from claim 1, in that claims 8 and 16 recite
limitations directed to updating the lists of virtual machines which has a tree
structure. Nonetheless, as discussed above with respect to claim 1, we
concur with the Examiner’s finding that the combination of Sherrill and
Fries teach this feature and are not persuaded of error by Appellant’s
argument which focus on the teachings of Sherrill alone. Thus, we are not
persuaded of error in the Examiner’s rejection of claims 8 and 16.
Claim 22
Appellant’s arguments, on page 14 of the Appeal Brief, directed to
claim 22, present part of the same argument as discussed above with respect
to claim 1, specifically focusing on the claim 22 limitation of a drop down
shortcut menu. App. Br. 14. As discussed above with respect to claim 1,
we are not persuaded of error by these arguments and we sustain the
Examiner’s rejection of claim 22.
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Claims 2 and 25
Appellant argues the Examiner erred in rejecting claims 2 and 25
because Sherrill fails to teach a drop down menu of search targets including
a favorite virtual machine and powered on virtual machine. App. Br. 18.
Further, Appellant argues that Fries teaches virtual machines and hosts can
be represented in a hierarchal structure but does not teach the search
parameters in dropdown menu as including favorite and powered on virtual
machine. App. Br. 19. Finally, Appellant argues that Hodges existence of a
favorites file used in the startup of virtual machines, but not teach but does
not teach search parameters dropdown menu including favorite and powered
on virtual machine. App Br. 19.
The Examiner finds that Sherrill teaches virtual machines, a dropdown
shortcut menu of search targets, Fries teaches a search targets that include
powered-on virtual machines, and Hodges teaches the concept of favorite
virtual machines. Final Act. 10—11 (citing Sherrill | 65; Fries Abstract;
Hodges 124); Ans. 5—6 (citing Sherrill Fig. 6). In combining the teachings
of Fries, Sherrill, and Hodges, the Examiner finds that it would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention to modify the dropdown shortcut menu of Sherrill to include
powered-on virtual machines and favorite virtual machines as search targets
because their combination would have yielded the predictable result of
“allowing] the user to select a value or property without having to manually
enter it.” Final Act 10, Ans. 5. We have reviewed the evidence cited by the
Examiner and concur with the Examiner’s findings.
Appellant’s arguments are not persuasive because they address each
of Fries, Sherrill, and Hodges individually, where the Examiner relies on the
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combination of Fries, Sherrill, and Hodges. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). We note that Appellant asserts, for the first time in the Reply Brief,
the Examiner fails to provide sufficient rationale to support the conclusion of
obviousness based upon the combination of Fries, Sherrill, and Hodges.
Reply Br. 5—6. Appellant has not shown good cause as to why these
arguments could not be presented earlier. As such, this argument has not
been considered, and is waived. See Ex parte Borden, 93 USPQ2d 1473,
1473—74 (BPAI 2010) (informative). Accordingly, Appellant’s arguments
directed to the Examiner’s rejection of claims 2 and 25 have not persuaded
us of error and we sustain the Examiner’s rejection.
Claim 26
Appellant’s arguments, on pages 20 through 22 of the Appeal Brief,
directed to claim 26, present the same argument as discussed above with
respect to claim 25. As discussed above with respect to claim 25, we are
not persuaded of error by this argument. Appellant additionally argues that
the references do not teach the claim 26 limitation directed to one of the
dropdown search criteria is whether a virtual machine is running on a
specified host. We are not persuaded of error in the Examiner’s rejection, as
discussed above the Examiner finds that the combination of Fries and
Sherrill teaches the use of dropdown menus to enter search terms which
update the tree. Further, the Examiner finds that Fries teaches search
properties includes state which includes the state being on, and that both
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Fries and Sherrill teach searching for hosts (whether a virtual machine is in a
specified host). Answer 5-6. We concur with the Examiner’s findings and
conclusions. We additionally note that Fries provides an example, in
paragraph 23, of a user searching to see which virtual machine is running on
a specific host. Accordingly Appellant’s arguments directed to claim 26,
have not persuaded us of error in the Examiner’s rejection and we sustain the
rejection.
Claims 3, 5 through 7, 9 through 15, 17 through 20, 23, and 24
through 26
Additionally, Appellant argues that dependent claims 3, 5 through 7, 9
through 15, 17 through 20, 23, and 24 through 26 are patentable for the same
reasons as their respective independent claims. App. Br. 13, 17, 20, 22. As
discussed above, Appellant’s arguments directed have not persuaded us of
error in the rejection of the claims from which these claims depend.
Accordingly, we sustain the Examiner’s rejections of claims 3, 5 through 7,
9 through 15, 17 through 20, 23, and 24 through 26.
DECISION
We sustain the Examiner’s rejections of claims 1 through 3, 5 through
20, and 22 through 26 under 35 U.S.C. § 103(a).
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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