VMware, Inc.

Patent Trials and Appeals Board

Apr 10, 2020

14959013 - (D) (P.T.A.B. Apr. 10, 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.
14/959,013 12/04/2015 Rajesh Khazanchi C543 4201
152606 7590 04/10/2020
VMWare - OPW
P.O. Box 4277
Seattle, WA 98194
EXAMINER
WEI, ZHENG
ART UNIT PAPER NUMBER
2192
MAIL DATE DELIVERY MODE
04/10/2020 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 RAJESH KHAZANCHI,
VISHWAS NAGARAJA, RAKESH SINHA, and ARJUB DUBE
____________

Appeal 2019-001944
Application 14/959,013
Technology Center 2100
____________

Before JOHN A. JEFFERY, BETH Z. SHAW, and CARL L. SILVERMAN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as VMWARE,
INC. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention an artifact-management subsystem that is at
least in partly implemented by plug-ins to a particular artifact repository.
The artifact-management-subsystem interface includes a comprehensive set
of search types, such that particular artifacts can be identified and retrieved
from various artifact repositories. See generally Abstract. Claims 1 and 12
are illustrative:
1. A workflow-based cloud-management system incorporated
within a cloud-computing facility having multiple servers, data-
storage devices, and one or more internal networks, the
workflow-based cloud-management system comprising:
an infrastructure-management-and-administration subsystem;
a workflow-execution engine;
an automated-application-deployment subsystem; and
an automated-application-release-management subsystem that
executes application release-management pipelines that each
comprises one or more stages, each comprising one of more
tasks, and that interfaces to an artifact-management-subsystem
that includes entrypoints to searches for artifacts carried out by a
local plug-in-compatible artifact repository as well as entrypoints
to searches for artifacts carried out, at least in part, by one or
more plug-in modules.

12. A method by which a management controller of an
automated-application-release-management-subsystem
component of a workflow-based cloud-management system that
is incorporated within a cloud-computing facility having
multiple servers, data-storage devices, and one or more internal
networks searches for artifacts, the method comprising:
compiling a search request; and
forwarding the search request to an artifact-management
subsystem that includes entrypoints to searches for artifacts
carried out by a local plug-in-compatible artifact repository as
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well as entrypoints to searches for artifacts carried out, at least in
part, by one or more plug-in modules.

THE REJECTIONS2
The Examiner rejected claims 1–11 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 8–9.3
The Examiner rejected claims 1–21 under 35 U.S.C. § 103 as
unpatentable over Tanner (US 2015/0026171 Al; published Jan. 22, 2015)
and Watters (US 2013/0174117 Al; published July 4, 2013). Final Act. 10–
16.

THE INELIGIBILITY REJECTION
Regarding independent claim 1, the Examiner reasons that because the
recited subsystems and engine are software implemented above the physical
layers 1104 and 1105 in Appellant’s Figure 11, the recited workflow-based
cloud-management system constitutes software per se that does not fall
within any statutory category of eligible subject matter under § 101. Final
Act. 8–9; Ans. 4–5.

2 Appellant’s arguments regarding the Examiner’s objections to the claims
(Appeal Br. 5) are petitionable matters that are not before us. See MPEP
§ 706.01 (“[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition . . . .”).
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
December 28, 2017 (“Final Act.”); (2) the Appeal Brief filed July 13, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed November 2, 2018
(“Ans.”); and (4) the Reply Brief filed December 18, 2018 (“Reply Br.”).
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Appellant argues that not only is the Examiner’s citing the Manual of
Patent Examining Procedure (MPEP) to support the ineligibility rejection
improper because the MPEP lacks the force and effect of law, there is no
legal basis for the Examiner’s software per se ineligibility rejection in any
event. Appeal Br. 6–7; Reply Br. 2–6. According to Appellant, not only are
software improvements eligible under § 101, the components of the recited
workflow-based cloud-management system are not a software listing, but
rather are a complex set of subsystems that carry out many tasks within
cloud-computing facilities. Reply Br. 2–4.
Appellant adds that not only is the recited workflow-based cloud-
management system incorporated within a cloud-computing facility with
servers, data-storage devices, and networks, the recited automated-
application-release-management subsystem executes pipelines and interfaces
to an artifact-management-subsystem—functions that neither printed nor
electronically encoded symbols can perform. Reply Br. 5.

ISSUE
Has the Examiner erred in rejecting claim 1 by determining that it
does not fall within any category of eligible subject matter under § 101
because the claim is directed to software per se?

ANALYSIS
On this record, we are persuaded of error in the Examiner’s
ineligibility rejection. To be sure, when claimed as a product, software per
se has no physical or tangible form and, therefore, does not fall within a
statutory category under § 101. See Microsoft Corp. v. AT&T Corp., 550
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U.S. 437, 449 (2007); see also MPEP § 2106.03(I)4 (9th ed. Rev. 08.2017,
Jan. 2018) (noting that products lacking a physical or tangible form, such as
a computer program per se (often referred to as “software per se”), are not
directed to any statutory category under § 101 when claimed as a product
without any structural limitations); see also id. (“[S]oftware expressed as
code or a set of instructions detached from any medium is an idea without
physical embodiment.”). As the MPEP explains, “a product claim to a
software program that does not also contain a structural limitation has no
physical or tangible form, and thus does not fall within any statutory
category.”). Id.
But that is not the case here. Notably, claim 1 recites a workflow-
based cloud-management system incorporated within a cloud-computing

4 Although the Examiner refers to MPEP § 2106.01(I) on page 9 of the Final
Office Action, that section no longer exists. Accord Appeal Br. 7 (noting
this point). Nevertheless, we cite the relevant section of the MPEP here,
namely MPEP § 2106.03(I). Although the MPEP does not have the force of
law as Appellant indicates (Appeal Br. 6–7; Reply Br. 3), it nonetheless
reflects the USPTO’s interpretation of substantive law, and is commonly
relied upon as a guide to patent attorneys and patent examiners on
procedural matters. See Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376,
1380 (Fed. Cir. 2015); see also MPEP Foreword (noting that the MPEP
“contains instructions to examiners, as well as other material in the nature of
information and interpretation, and outlines the current procedures which the
examiners are required or authorized to follow in appropriate cases in the
normal examination of a patent application”). Moreover, as the Federal
Circuit explains, the MPEP is entitled to judicial notice “so far as it is an
official interpretation of statutes or regulations with which it is not in
conflict.” Airbus, 793 F.3d at 1380. Therefore, to the extent that Appellant
contends that the ineligibility of software per se articulated in MPEP
§ 2106.03(I) somehow conflicts with statutory, regulatory, or established
case law (see Appeal Br. 6–7; Reply Br. 3), Appellant has shown no such
conflict on this record.
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facility with servers, data-storage devices, and networks, where the system’s
automated-application-release-management subsystem executes pipelines
and interfaces to an artifact-management-subsystem.
Our emphasis underscores key structural and functional elements of
the claim that are unattainable with software alone. First, even if the recited
workflow-based cloud-management system’s subsystems and engine are
entirely software as the Examiner indicates, these ostensibly pure software
components are nonetheless incorporated within a cloud-computing facility
with servers, data-storage devices, and networks—tangible computer-based
components that are concrete structural elements in the claim.
Second, we fail to see—nor has the Examiner shown—how a pure
software implementation of the recited automated-application-release-
management subsystem can execute associated pipelines as claimed, let
alone interface to an artifact-management-subsystem. Simply put, software
is program code or instructions executed by a computer. See MICROSOFT
COMPUTER DICTIONARY 489 (5th ed. 2002) (defining “software” as
“computer programs; instructions that make hardware work”). That is,
software does not execute program code or instructions: rather, a computer
does. See MCGRAW-HILL DICTIONARY OF COMPUTING & COMMUNICATIONS
130 (2003) (defining “execute” as “[u]sually, to run a compiled or
assembled program on the computer; by extension, to compile or assemble
and to run a source program”) (emphasis added). Therefore, the automated-
application-release-management subsystem must include a computer to
realize the recited execution and interfacing functions—functionality that
cannot be realized by software alone. Accord Spec. ¶ 33 (“Software alone
can do nothing.”).
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To be sure, the recited automated-application-release-management
subsystem is recited inartfully in terms of steps that it actively performs,
namely that it (1) executes associated pipelines, and (2) interfaces to an
artifact-management-subsystem. Our emphasis underscores the fact that the
claim does not recite that the automated-application-release-management
subsystem is configured to perform these functions, but that it actually
performs the functions.
Apparatus claims reciting active method steps have been held
indefinite under § 112(b), for such claims raise the question of whether they
are infringed by devices that are merely capable of performing the recited
function, or that they must actually perform that function. See IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005);
see also Rembrandt Data Technologies, LP v. AOL, LLC, 641 F.3d 1331,
1339 (Fed. Cir. 2011) (data transmitting device held indefinite for reciting
transmitting method step). Nevertheless, the Examiner did not reject claim 1
on this basis, nor will we speculate in that regard here in the first instance on
appeal. Rather, we leave this question to the Examiner to consider after our
decision.
But what we can say is that the Examiner’s ineligibility rejection
based on the claimed invention not falling within any statutory category
because it is ostensibly directed to software per se is untenable on this
record. Therefore, we are persuaded that the Examiner erred in rejecting
claims 1–11 under § 101.5

5 Additionally, we note current USPTO Guidelines also apply to § 101
rejections. See USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
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THE OBVIOUSNESS REJECTION
Regarding independent claim 12, the Examiner finds that Tanner
discloses a method where a management controller compiles and forwards a
search request to an artifact-management subsystem that includes
entrypoints to searches for artifacts carried out by (1) a local plug-in-
compatible artifact repository, and (2) at least partly by one or more plug-in
modules. Final Act. 10–11. Although the Examiner acknowledges that
Tanner’s management controller is not associated with an automated-
application-release-management-subsystem component of a workflow-based
cloud-management system that is incorporated within a cloud-computing
facility, the Examiner cites Watters as teaching this feature in concluding
that the claim would have been obvious. Final Act. 11.
Appellant argues that Tanner does not compile a search request, let
alone forward that request to an artifact-management subsystem that
includes the recited artifact search entrypoints. Appeal Br. 11–12; Reply Br.
6–17. Appellant also contends that the Examiner’s reliance on Watters is
misplaced because, among other things, Watters does not disclose
workflows, let alone a workflow-based cloud-management system as
claimed. Appeal Br. 13–14; Reply Br. 17–18. Appellant adds that the
Examiner’s attempt to demonstrate a motivation to combine the cited
references falls short of the requirements for such a demonstration. Appeal
Br. 14. Appellant argues various other recited limitations summarized
below.

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ISSUES
I. Under § 103, has the Examiner erred by finding that Tanner and
Watters collectively would have taught or suggested:
(1) a management controller of an automated-application-release-
management-subsystem component of a workflow-based cloud-management
system that is incorporated within a cloud-computing facility, where the
controller compiles and forwards a search request to an artifact-management
subsystem that includes entrypoints to searches for artifacts carried out (a)
by a local plug-in-compatible artifact repository, and (b) at least partly by
one or more plug-in modules as recited in claim 12?
(2) the workflow-execution engine in claim 13?
(3) the interface to the workflow-execution engine recited in claim
14?
(4) the local plug-in-compatible artifact repository recited in claim
15?
II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 12 and 21
We begin by construing a key disputed limitation of independent
claim 12 that recites, in pertinent part, compiling a search request. The
Specification does not define the term “compiling,” unlike other terms
whose concrete definitions leave no doubt as to their meaning. See Spec.
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¶ 33 (defining “abstraction”); ¶ 57 (defining “workflows”); ¶ 82 (defining
“plug-ins”).
Paragraph 85 of Appellant’s Specification does, however, describe
generating a search request 2810 from information contained in a search-
type table 2802 that includes (1) a particular search type 2812; (2) parameter
values 2814 that are supplied in a call to an API entrypoint corresponding to
the search type; and (3) a list of repositories 2816 to search and retrieve
artifacts.6 As shown in Appellant’s Figure 28 reproduced below, these three
pieces of information are combined in the search request.

Appellant’s Figure 28 showing combining information in search request

6 Although the term “artifact” is not defined in the Specification, the term is
nonetheless used in connection with binary files that are used to build cloud-
resident applications. See Spec. ¶ 57. Accord Watters ¶ 25 (noting that
artifacts are non-source-code files, and that all artifacts required to build a
project are stored in an artifact repository).
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As shown above, the search request 2810 is generated automatically
by extracting and combining three different pieces of information stored in a
table. See Spec. ¶ 85. Accord Reply Br. 12 (noting that compiling a search
request involves a machine gathering and combining information obtained in
a table).
Although this discussion informs our understanding of the recited
search request compilation, the term is not so limited. The term “compile” is
defined, in pertinent part, as “collect (information) in order to produce
something.” Lexico.com, Oxford University Press (2019),
https://www.lexico.com/en/definition/compile (last visited Apr. 6, 2020).
Given this interpretation, we see no error in the Examiner’s reliance
on the functionality of Tanner’s front end user interface 180 with its search
string entry box 182 and search button 184 in Figure 1B for teaching the
recited search request compilation. See Final Act. 10–11; Ans. 6–7.
Although Tanner’s computer system collects information from a user,
namely a search string entered by a user in box 182, this information is
nonetheless used by the computer system to formulate a search request that
is forwarded to different repositories. See Tanner ¶¶ 27–34; Figs. 1B–2. In
short, nothing in the claim precludes Tanner’s system that collects at least
some information from a user to produce something, namely a search
request, to therefore compile that request. Appellant’s arguments to the
contrary (Appeal Br. 11; Reply Br. 6–13) are unavailing and not
commensurate with the scope of the claim.
Nor do we see error in the Examiner’s reliance on Tanner for at least
suggesting forwarding the search request to an artifact-management
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subsystem that includes entrypoints to searches for artifacts carried out (1)
by a local plug-in-compatible artifact repository, which the Examiner maps
to topic database plug-in 185e, and (2) at least partly by one or more plug-in
modules, namely plug-ins 185a–185d. Final Act. 11; Ans. 7–8.
We reach this conclusion noting, as does the Examiner (Ans. 7), that
the term “entrypoints” is not defined in the Specification to limit its
interpretation, unlike other terms whose concrete definitions leave no doubt
as to their meaning. See Spec. ¶ 33 (defining “abstraction”); ¶ 57 (defining
“workflows”); ¶ 82 (defining “plug-ins”). Although the Specification’s
paragraph 86 describes calling native and plug-in API entrypoints in steps
2913 and 2916 to execute a search request and retrieve artifacts from a
repository, we decline to import those particular API entrypoints into the
claim. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en
banc) (citations omitted). Nor is the term “entrypoint” limited to the
particular definition proffered by Appellant on page 15 of the Reply Brief.
Rather, we interpret the term “entrypoint” as the term is understood in
the art, namely “[a] place in a program where execution can begin.”
MICROSOFT COMPUTER DICTIONARY 31 (5th ed. 2002). Given this
interpretation considered in light of the Specification, we see no error in the
Examiner’s reliance on Tanner’s plug-in components 185a–185e in Figure
1B for at least suggesting the recited artifact search entrypoints, particularly
since each such component is a separate software application relating to a
separate repository or database as noted in paragraph 27. Accord Ans. 8.
Invoking these separate software programs to execute the searches in
Tanner’s Figures 2 and 3 and paragraphs 29 to 33 at least suggests
corresponding entrypoints associated with those programs, namely places in
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those programs where execution begins. Appellant’s arguments to the
contrary (Appeal Br. 11–12; Reply Br. 13–17) are, therefore, unavailing and
not commensurate with the scope of the claim.
We also see no error in the Examiner’s reliance on Watters for the
limited purpose for which it was cited, namely for teaching that various
components and systems, including the recited automated-application-
release-management-subsystem component of a workflow-based cloud-
management system, can be included within a cloud-computing facility. See
Final Act. 11–12; Ans. 9.
Although Watters does not state explicitly that the system shown in
Figure 2 is a workflow-based cloud-management system that is incorporated
within a cloud-computing facility, the associated functionality at least
suggests as much. According to paragraph 57 of Appellant’s Specification,
“workflows” are high-level programs with many built-in functions, scripting
tools, and development tools and graphical interfaces. That paragraph
further explains that the automated-application-release-management facility
116 provides workflow-based automated release-management tools to
enable cloud-resident application developers to generate continuously
application releases produced by automated deployment, testing, and
validation functionalities. Spec. ¶ 57.
As shown in Watters’s Figure 2, the system 200 includes various
servers including a source code management server 205 that not only
enables developers to build cloud appliances by writing source code and
scripts, but also tracks associated changes and provides data recovery
functionality. See Watters ¶¶ 31–32. The system further includes
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continuous integration server 235 and associated build managers 237, as
well as artifact repository server 260. See Watters ¶¶ 36–37, 42–45.
The clear import of this functionality is that it is part of a workflow-
based cloud-management system, namely a cloud-based system that
manages and integrates associated programs and their development. On this
record, we see no reason why such cloud-based management and integration
functionality could not be provided in connection with Tanner’s search
functionality as the Examiner proposes. See Final Act. 11–12; Ans. 9. Such
an enhancement uses prior art elements predictably according to their
established functions—an obvious improvement. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). Appellants’ arguments regarding Watters’s
individual shortcomings regarding the recited workflow-based cloud
management system and management system (App. Br. 13–14; Reply Br.
17) do not show nonobviousness where, as here, the rejection is based on the
cited references’ collective teachings. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 12, and claim 21 not argued separately with particularity.

Claim 13
We also sustain the Examiner’s rejection of claim 13 reciting, in
pertinent part, the workflow-based cloud-management system comprises a
workflow-execution engine. Final Act. 12.
First, Appellant’s argument fails to comply with the requirements of
37 C.F.R. § 41.37(c)(1)(iv). See Appeal Br. 14–15. Notably, this rule
requires that each contested ground of rejection be argued under a separate
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heading—a requirement that was not satisfied here. See MPEP § 1205.02
(“To make certain that an argument for separate consideration of a claim or
subgroup of claims is not overlooked by the examiner or by the Board, the
rule requires appellant to use a subheading for each claim for which separate
consideration by the Board is desired.”) (emphasis added).
But leaving this impropriety aside, Appellant still does not squarely
address—let alone persuasively rebut—the Examiner’s reliance on Watters’s
build managers 237 for teaching the recited workflow-execution engine. See
Final Act. 12. Appellant’s contentions regarding Watters’s not mentioning
the term “workflow” (Appeal Br. 14–15) are unavailing for the reasons
noted previously.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 13.

Claims 2–11 and 14
We also sustain the Examiner’s rejection of claim 14 reciting, in
pertinent part, that the automated-application-release-management-
subsystem comprises an interface to the workflow-execution engine. Final
Act. 12–13.
Leaving aside the fact that Appellant did not comply with the
requirements of 37 C.F.R. § 41.37(c)(1)(iv) for this argument as noted
above, Appellant does not persuasively rebut the Examiner’s reliance on the
functionality of Tanner’s Figure 4 and 5 for at least suggesting the recited
interface. See Final Act. 12–13. Appellants’ arguments regarding Tanner’s
allegedly lacking a workflow-execution engine (App. Br. 15) are unavailing,
for Watters was cited for teaching that feature as noted previously. See Final
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Act. 12. In short, Appellant’s arguments do not show nonobviousness
where, as here, the rejection is based on the cited references’ collective
teachings. See Merck, 800 F.2d at 1097.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14, and claims 2–11 not argued separately with particularity.

Claims 15–19
We also sustain the Examiner’s rejection of claim 15 reciting, in
pertinent part, a local plug-in-compatible artifact repository. Final Act. 13.
Leaving aside the fact that Appellant did not comply with the
requirements of 37 C.F.R. § 41.37(c)(1)(iv) for this argument as noted
above, and despite Appellant’s arguments to the contrary (Appeal Br. 15),
Appellant does not persuasively rebut the Examiner’s reliance on the
functionality of the repository associated with at least Tanner’s topic
database plug-in component 185e consistent with the Examiner’s mapping
articulated in connection with the rejection of independent claim 12 and
dependent claim 15. See Final Act. 11, 13. Appellant’s contentions
regarding the cited prior art’s not mentioning the terms “entrypoint” or
“workflow” (Appeal Br. 15) are unavailing for the reasons previously
discussed.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15, and claims 16–19 not argued separately with particularity.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
1–11 101 Ineligibility 1–11
1–21 103 Tanner,
Watters
1–21
Overall
Outcome
1–21

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

AFFIRMED