Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Sep 28, 2020

2019005597 (P.T.A.B. Sep. 28, 2020)

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.
14/469,885 08/27/2014 Bryan L. Young RPS920140085-US-NP 2951
63203 7590 09/28/2020
ROGITZ & ASSOCIATES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
EXAMINER
BOURZIK, BRAHIM
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
John@rogitz.com
Noelle@rogitz.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRYAN L. YOUNG, AMY LEIGH ROSE,
NATHAN J. PETERSON, JOHN SCOTT CROWE, and
JENNIFER LEE-BARON

Appeal 2019-005597
Application 14/469,885
Technology Center 2100

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6, 8, 15, 17, 18, 20, 25, 27, 29–35,
37, and 39–41. Final Act., Summary (Form PTOL-326). Claims 2–5, 7,
9–14, 16, 19, 21–24, 26, 28, 36, and 38 are canceled. Id. at 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Lenovo Singapore PTE[,] Ltd.” Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “determine[s] that a virtual machine (VM)
. . . is in an at least [a] partially idle state and pause[s] the VM in response to
the determination.” Spec., Abst. Independent claim 18 and depending
claim 25, reproduced below, are illustrative of argued subject matter.
18. A computer readable storage medium that is not a
transitory signal, the computer readable storage medium
comprising instructions executable by a processor to:
determine that a first virtual machine (VM) running at a device
is idle;
pause operation of the first VM in response to the determination
and maintain data for the first VM in random access memory
(RAM) accessible to the device; and
present a user interface (UI) on a display accessible to the
processor, the UI comprising a selector that is selectable to
configure a setting for the device so that, in the future, VMs are
automatically paused when determinations are made that VMs
are in an at least partially idle state.
25. The computer readable storage medium of Claim 18,
wherein the UI comprises a second selector selectable to
decline to permit a user to pause VMs in the future.
Appeal Br., Claims Appendix.
Rejections
Claims 1, 6, 8, 15, 17, 18, 20, 25, and 33 stand rejected under
35 U.S.C. § 103 as unpatentable over Chandrachari (US 8,880,687 B1;
Nov. 4, 2014), Beveridge (US 2014/0173181 A1; June 19, 2014), and
Ginzton (US 8,528,107 B1; Sept. 3, 2013). Final Act. 3–22.
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Claims 31, 32, 34, 35, 37, and 39–41 stand rejected under
35 U.S.C. § 103 as unpatentable over Chandrachari, Beveridge, Ginzton, and
Dabagh (US 2010/0174808 A1; July 8, 2010). Final Act. 23–37.
Claims 27, 29, and 30 stand rejected under 35 U.S.C. § 103 as
unpatentable over Chandrachari, Beveridge, Ginzton, and Dwarampudi
(US 2012/0084262 A1; Apr. 5, 2012). Final Act. 37–39.
OPINION
Motivation
For all rejections, Appellant contends the Examiner does not show a
motivation to combine the applied prior art. Appeal Br. 8–9 (claim 25), 14–
15 (claim 33), 15–17 (claims 1, 6, 8, 15, 17, 18, and 20), 18–20 (claims 31,
32, 34, 35, 37, and 39–41), 20–22 (claims 27, 29, and 30). Specifically,
Appellant repeats the same contentions for each of the five sets of claims
parenthetically identified above. Id. First, Appellant quotes the Examiner’s
rationale/s for combining the applied prior art and then summarily contends
the reasoning “[a]t best” concerns whether an artisan “could have made the
proposed combination.” Id. at 9, 15, 17, 19, 21. Second, Appellant
summarily contends the record is “silent on any reasons or evidence
. . . prov[ing an] artisan would be motivated to seek out the particular
secondary references . . . without already knowing about them.” Id. Third,
Appellant contends a feature of a given reference (e.g., a feature of Ginzton)
is added to the combination but is not disclosed ipsissimis verbis in the other
references. Id. at 9, 15, 17, 19, 21–22.
With respect to the base combination of Chandrachari, Beveridge, and
Ginzton (applied by all rejections) Appellant argues that the advantages of
the combination proffered by the Examiner are immaterial to the
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obviousness analysis. Id. at 4. Instead, Appellant contends that the “proper
question” of obviousness is as follows:
[T]he question under the law is not whether the skilled artisan,
once presented with the references, would recognize
“advantages” of combining them[.] The proper question is
whether the skilled artisan would be motivated to pick out and
combine the references in the first place.
Id. at 5, 9 (emphasis omitted).
Contrary to the above contentions, there is no requirement to “prove
[an] artisan would . . . seek out the particular secondary references
. . . without already knowing about them” (Appeal Br. 9, 15, 17, 19, 21);
rather, an artisan is categorically aware of all prior art.2 See Standard Oil
Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (“The issue of
obviousness is determined entirely with reference to a hypothetical ‘person
having ordinary skill in the art[]’ . . . who is presumed to be aware of all the
pertinent prior art.”). Further, there is no requirement for an ipsissimis
verbis relationship between combined teachings of prior art (see
Appeal Br. 9, 15, 17, 19, 21–22), nor even for a disclosed relationship if the
plain inferences and creativity of an artisan provide sufficient reason for the
combination (see infra 6 (requirements for a prima facie case of
obviousness)). See also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(References need not even be analogous to one another, but rather “qualify
as prior art for an obviousness determination [] when analogous to the
claimed invention.”); In re Schaumann, 572 F.2d 312, 317 (CCPA 1978)
(Even where a prior art teaching is needed, an ipsissimis verbis test would

2 Appellant does not dispute that the applied references are analogous art to
the claimed invention.
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wrongly “ex[]alt[] form over substance.”). And lastly, the proper question
of motivation is indeed whether an artisan would see a benefit of combining
prior art as proposed. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 424
(2007) (“[T]he issue [is] too narrowly [considered] by, in effect, asking
whether a pedal designer writing on a blank slate would have chosen both
[the pedal structure of the] Asano [patent] and a modular sensor similar to
the ones used in the Chevrolet . . . patent. . . . The proper question to have
asked was whether a pedal designer of ordinary skill . . . would have seen a
benefit to upgrading Asano with a sensor.”).
A prima facie case of obviousness is achieved if the record clearly
conveys to a person of ordinary skill in the art a reason for concluding the
combination (or modification) of prior art would have been obvious, such
that the applicant can understand and address the merits of the
combination. See KSR, 550 U.S. at 418 (requirements for obviousness
analysis); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (requirements
for a prima facie case). If the combination entails more than a simple
swapping or adding of features to predictably improve a device, then it may
be necessary to identify interrelated teachings of the applied prior art
that would prompt an artisan to make the combination. KSR, 550
U.S. at 417–18. However, if the plain inferences and creativity of an artisan
(e.g., common sense) provide sufficient reason for the combination, the
analysis “need not seek out precise teachings” to make the
combination. Id. at 418. In sum, “obviousness analysis cannot be confined
by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents.” Id. at 419.
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In light of the above contentions and considerations, we are not
persuaded that Appellant shows the record lacks a prima facie case of
obviousness. For example, Appellant does not contend or provide sufficient
evidence to show that the combination of prior art entails more than a simple
and predictable improvement, such that a specific teaching or suggestion of
the combination should be shown in the prior art. Indeed, though repeatedly
contesting the Chandrachari-Ginzton combination, Appellant does not
provide sufficient evidence to show error in the Examiner’s specific findings
regarding the combination of the references. Appeal Br. 9, 15, 17.
We agree with the Examiner that the Chandrachari-Ginzton
combination is simple and predictable. Final Act. 15–16 (Chandrachari), 6–
7 (Ginzton); Ans. 44–46. The Examiner’s combination starts with
Chandrachari’s invention whereby a VM host (manager module) can set a
VM to be monitored and paused for idleness. Final Act. 15 (citing
Chandrachari col. 18, ll. 1–5). The Examiner combines Ginzton’s UI
whereby a VM host administrator can authorize a VM user to modify a VM,
such as permit the user to pause the VM. Final Act. 17 (citing Ginzton
col. 12, ll. 20–33), 20–21 (citing Ginzton col. 11, ll. 40–55).
The Examiner finds that adding Ginzton’s UI authorization to modify
a VM—and thereby adding a UI authorization to set a VM to be monitored
and paused for idleness (as in Chandrachari)— would be obvious to one of
ordinary skill in the art because it would provide more security to the VM
host. Ans. 46, 54 (citing Ginzton col. 2). At the time of Appellant’s
invention, VM host administrators ubiquitously controlled permissions to
modify VMs and did so to protect VM hosts and VMs. See, e.g., Ginzton
col. 2, ll. 14–16 (“[T]he invention may be implemented in a corporate
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environment with a variety of restrictions to improve security.”); see also
KSR, 550 U.S. at 421 (providing “factfinders recourse to common
sense”). Appellant does not provide sufficient argument or evidence to rebut
this or any other rationale provided by the Examiner (as discussed supra).
Accordingly, for the reasons stated, we are unpersuaded by
Appellant’s arguments directed to motivation.
Claims 25 and 31
For each of claims 25 and 31, Appellant also contends the Examiner
unreasonably asserts Ginzton as teaching or suggesting the claimed “second
selector that is selectable to decline to permit a user to pause VMs in the
future.” Appeal Br. 4–8, 10–13 (emphasis omitted).3 Specifically,
Appellant contends Ginzton teaches only a UI capability to bar (i.e., “to
decline to permit,” as claimed) a user from pausing VMs—not use of a
UI-displayed “selector” to bar a user from pausing VMs. Id. Appellant
further contends that, even assuming Ginzton’s UI permissions to modify a
VM (“restrictions”) are set by an administrator’s interaction with a UI, the
permissions could nonetheless be set without a “selector . . . [as] construed
in conformance with Appellant’s specification.” Reply Br. 4, 7–8 (emphasis
omitted). We are unpersuaded for two reasons.

3 Appellant’s arguments repeatedly assert claim 33’s following language:
“UI comprises a second selector that is selectable to decline to permit a user
to pause VMs in the future but still allow a system administrator to pause
VMs in the future.” Appeal Br. 10–13; Reply Br. 6. The arguments,
however, address only the following portion: “UI comprises a second
selector that is selectable to decline to permit a user to pause VMs in the
future.” Appeal Br. 11–13; Reply Br. 7–8. As can be seen, the addressed
portion is identical to claim 25’s disputed limitation.
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First, Appellant does not identify a function or structure of the
claimed selector (e.g., a UI-displayed feature) for us to compare against
Ginzton’s teachings. Second, at the time of Appellant’s invention (2014), a
software application’s UI was ubiquitously presumed to be a graphical UI
(GUI) whereby a user inputs selectable states (e.g., yes/no permissions) via
graphic buttons. See KSR, 550 U.S. at 421 (providing “factfinders recourse
to common sense”); see also Koninklijke Philips N.V. v. Google LLC,
948 F.3d 1330, 1337 (Fed. Cir. 2020) (“Regardless of the tribunal,
. . . common sense and common knowledge can, under certain
circumstances, be used to supply a missing limitation.”). Appellant’s
Specification illustrates “selector elements” 506, 606, 608, 610, 612, 616,
618 as graphic buttons.
In view of the above, even assuming (arguendo) the claimed second
selector comprises one of the disclosed “selector element” features,
importation of that feature to the claimed invention would not patentably
distinguish over Ginzton’s UI as understood by artisans (i.e., understood as
inputting selectable states via graphic buttons).
Accordingly, for the reasons stated, we are unpersuaded of Examiner
error by Appellant’s arguments directed to the claimed second selector.
OVERALL CONCLUSION
We are unpersuaded of error and accordingly affirm the Examiner’s
decision to reject claims 1, 6, 8, 15, 17, 18, 20, 25, 27, 29–35, 37, and 39–
41.
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DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 8, 15,
17–18, 20, 25,
33
103 Chandrachari, Beveridge, Ginzton
1, 6, 8, 15, 17,
18, 20, 25, 33
31, 32, 34, 35,
37, 39–41 103
Chandrachari,
Beveridge,
Ginzton, Dabagh
31, 32, 34, 35,
37, 39–41
27, 29, 30 103
Chandrachari,
Beveridge,
Ginzton,
Dwarampudi
27, 29, 30
Overall
Outcome
1, 6, 8, 15, 17,
18, 20, 25, 27,
29–35, 37,
39–41

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED