VMware, Inc.

Patent Trials and Appeals Board

Dec 4, 2020

2019005338 (P.T.A.B. Dec. 4, 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.
15/277,902 09/27/2016 Mihnea Olteanu C745.01 2267
152606 7590 12/04/2020
Olympic Patent Works PLLC
4979 Admiral Street
Gig Harbor, WA 98332
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
12/04/2020 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 MIHNEA OLTEANU, BHARATH SIRAVARA,
MARIUS POPA, XIN YAO, and VUI CHIAP LAM
____________________

Appeal 2019-005338
Application 15/277,902
Technology Center 2400
____________________

Before ERIC S. FRAHM, CATHERINE SHIANG, and JULIET
MITCHELL DIRBA, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as VMWare, Inc. (Appeal Br. 1).
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STATEMENT OF THE CASE
Disclosed Invention and Exemplary Claim
Appellant’s disclosed invention, entitled “METHODS AND
SUBSYSTEMS THAT EFFICIENTLY DISTRIBUTE VM IMAGES IN
DISTRIBUTED COMPUTING SYSTEMS” (Title), concerns “cloud
computing and large distributed computing systems” (Spec. ¶ 3), and more
particularly, the invention
is directed to management of infrastructure-as-a-service
platforms, including infrastructure-as-a-service platforms
implemented in one or more large distributed computing systems
and, in particular, to methods and subsystems within
management systems for infrastructure-as-a-service platforms
that efficiently distribute VM images to servers for instantiating
VMs within servers.

Spec. ¶ 1.
Exemplary independent claim 1 under appeal, with emphases added to key
portions of the claim at issue, reads as follows:
1. A distributed VM-image-distribution subsystem of a
management system within a distributed computer system
having multiple servers, multiple data-storage devices, and one
or more internal networks, the distributed VM-image-
distribution subsystem implemented as stored computer
instructions that, when executed on one or more processors of
one or more computer systems, control the computer system to:
organize data stores within the distributed computer
system that store VM images into groups, each group including
an image data store and multiple associated local data stores;
classify each VM image as one of an EAGER image and
an ON_DEMAND image;
when an EAGER image is created and stored in a first
image data store, propagate the VM image to the remaining
image data stores within the distributed computer system and
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propagate the VM image from each image data store to the local
data stores associated with the image data store;
when an ON_DEMAND image is created and stored in a
first image data store, propagate the VM image to the remaining
image data stores within the distributed computer system; and
when the management system processes a request to
instantiate an ON_DEMAND image on a server, transfers the
ON_DEMAND image from an image data store to a local data
store accessible to the server.
Appeal Br. 37, Claims Appendix (emphases added). Remaining
independent claims 9 and 17 recite commensurate limitations and subject
matter.
The Examiner’s Rejections
(1) The Examiner rejected claims 17–20 under 35 U.S.C. § 101 as
being directed to a judicial exception such as an abstract idea, without
significantly more (see Final Act. 10). Because the Examiner has withdrawn
this rejection in the Answer (see Ans. 3), we do not reach the merits or
otherwise review this rejection in our decision, and we will not address
Appellant’s arguments (see Appeal Br. 5–8) directed thereto.
(2) Claims 1, 2, 4, 5, 9, 10, 13, 17, 19, and 20 stand rejected under 35
U.S.C. § 103 as being unpatentable over the base combination of Ben-Shaul
et al. (US 2017/0366606 A1; published Dec. 21, 2017 and filed Sept. 5,
2017) (hereinafter, “Ben-Shaul”) and Kannan et al. (US 2014/0201735 A1;
published July 17, 2014) (hereinafter, “Kannan”). Final Act. 11–18.
(3) Claims 6, 7, 14, 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the base combination of Ben-Shaul, Kannan, and Eda et
al. (US 2016/0366217 A1; published Dec. 15, 2016 and filed June 12, 2015)
(hereinafter, “Eda”). Final Act. 18–20.
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(4) Claims 8 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the base combination of Ben-Shaul, Kannan, and Snider et
al. (US 2016/0316003 A1; published Oct. 27, 2016 and filed Sept. 11, 2015)
(hereinafter, “Snider”). Final Act. 20–22.
(5) Claims 3, 11, 12, and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the base combination of Ben-Shaul, Kannan, and
Wayda et al. (US 2007/0185973 A1; published Aug. 9, 2007) (hereinafter,
“Wayda”). Final Act. 22–24.

Appellant’s Dispositive Contention
Appellant contends that the Examiner erred in rejecting claims 1–20
under 35 U.S.C. § 103 based on the failure of the base combination of Ben-
Shaul and Kannan to teach or suggest classifying and distributing VM
images, where “[a] VM image is a file or files that include a data
representation of a virtual machine, the virtual data-storage devices to which
it is connected, and, when it is intended to run an application or applications,
the application or applications that it will execute” (see Appeal Br. 15).
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 8–
36) and Reply Brief (Reply Br. 2–10), the following dispositive issue is
presented on appeal:
Has Appellant shown that the Examiner erred in rejecting claims 1–20
under 35 U.S.C. § 103 because the base combination of Ben-Shaul and
Kannan fails to teach or suggest organizing data stores in a distributed
computer system and classifying VM images as recited in independent claim
1, and as commensurately recited in remaining independent claims 9 and 17?
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ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 8–
15; Reply Br. 2–10), the Examiner’s rejection as to claims 1, 9, and 17
(Final Act. 11–24), and the Examiner’s response (Ans. 4–15) to Appellant’s
arguments in the Appeal Brief. We are persuaded by Appellant’s
contentions that the Examiner has not sufficiently shown that the
combination of applied references, and in particular Ben-Shaul, teaches or
suggests the subject matter recited in the independent claims, namely the
classification and distribution of VM images (see Appeal Br. 8–35; Reply
Br. 2–10). Our reasoning follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We will not resort to speculation or assumptions to cure the deficiencies in
the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
In this light, and in view of the Examiner’s explanations as to the
basis for the rejection of claims 1, 9, and 17 (see Final Act. 11–15; Ans. 4–
15), the Examiner has not sufficiently shown that Ben-Shaul’s computer
instances or containers teach or suggest the recited VM images.
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Specifically, the Examiner determines Ben-Shaul’s paragraphs 265
and 266 teach or suggest classifying VM images as recited in claims 1, 9,
and 17 (see Final Act. 12; Ans. 11, 14), based on the interpretations that (i)
Ben-Shaul’s computer instances or containers are VM images (see Ans. 4;
see also Ben-Shaul ¶¶ 298, 303, 310, 317, 319); and (ii) Ben-Shaul’s
disclosed “workload” (see e.g., Ben-Shaul ¶¶ 265, 266, 286) is a VM image
(see Ans. 7, 9, 11). More specifically, the Examiner determines the
following:
In [the] context of BenShaul the term “workload” is used
interchangeably with “application”, “VM images” and “VM
instance” because the said BenShaul workload is implement[ed]
via a VM image/VM instance.

Final Act. 7, 9. Based on these findings, the Examiner further determines:
BenShaul[’s] Paragraph 266 disclosed predictable workloads or
experimental or volatile workloads which hare equivalent to the
claimed VM-image classifications EAGER and ON_DEMAND
because the BenShaul workloads/VM images are associated with
a particular description/label.

Final Act. 9. However, containers and containerization are different than
VM images and VM image classification, as is supported by Appellant’s
Specification (compare Figs. 5C, 5D; Spec. ¶¶ 23, 24 (describing containers)
with Figs. 7A–D (VM image creation and distribution), Figs. 8D–G (VM
images such as EAGER images), Figs. 9A–D (VM images such as
ON_DEMAND images); Spec. ¶¶ 28–41.
At best, the Examiner’s proposed combination leaves us to speculate
as to how or why one of ordinary skill in the art would understand Ben-
Shaul’s workloads, computer instances, or containers to meet the VM image
classification and distribution limitations recited in claims 1, 9, and 17. See
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In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112
(BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is
not a process whereby the examiner . . . invite[s] the [B]oard to examine the
application and resolve patentability in the first instance.”).
Because the Examiner’s findings regarding Ben-Shaul are
contradictory, untenable, and fail to support a conclusion of obviousness,
Appellant’s arguments are persuasive. As a result, Appellant has
sufficiently demonstrated the prima facie case, based on the findings as to
Ben-Shaul, to be in error.
Notably, even if we were to find Ben-Shaul’s computer containers and
containerization process to be equivalent to the claimed VM images,
classification, and distribution, the containers and containerization features
relied on by the Examiner from Ben-Shaul (see Final Act. 12, 13, 15 (citing
Ben-Shaul Fig. 24; ¶¶ 298, 303, 310, 317, 319); Ans. 4, 6, 8, 12, 14 (citing
Ben-Shaul Fig. 24; ¶¶ 298, 303, 310, 317)) are not supported by the
continuation-in-part application to which Ben-Shaul claims priority (US
Application No. 14/554,837 filed November 26, 2014, now US Patent No.
9,753,669). Figure 24 of the parent application of Ben-Shaul only shows
and describes a read only memory (ROM) 2408, and not computer instances
or containers. Indeed, Ben-Shaul’s parent application does not support
containers at all, and starting at paragraph 280 therein, only discloses section
“7.0 HARDWARE OVERVIEW” (¶ 280) that includes ROM 2408 (see
¶ 284; see also generally ¶¶ 282–294 describing Figure 24). As a result, as
to the container and containerization subject matter described in Ben-Shaul
(see Ben-Shaul Fig. 24, containers 2403/2407 and container framework
2408, containers 2441/2444/2446, and container framework 2448; ¶¶ 298,
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303, 310, 317, 319), Ben-Shaul’s parent application does not support the
subject matter relied on in the Examiner’s rejection. Thus, as to the
container and containerization features described in Ben-Shaul and relied on
by the Examiner in making the rejections, only the filing date of September
5, 2017, which is after Appellant’s filing date of September 27, 2016, is
available. Therefore, Ben-Shaul’s container and containerization disclosures
are not prior art to Appellant’s claims.
Based on the record before us, we find that the Examiner (i) has not
sufficiently shown the combination of applied references teaches or suggests
VM image classification and distribution recited in claims 1, 9, and 17; (ii)
incorrectly relies upon the base combination of Ben-Shaul and Kannan to
teach or suggest the VM image limitations in claims 1, 9, and 17; and thus,
(iii) has not properly established factual determinations and articulated
reasoning with a rational underpinning to support the legal conclusion of
obviousness for claims 1, 9, and 17, resulting in a failure to establish a prima
facie of obviousness.
As a result, based on the record before us, Appellant has shown the
Examiner erred in rejecting independent claims 1, 9, and 17, and thus claims
2, 4, 5, 10, 13, 19, and 20 depending respectively therefrom, under 35 U.S.C.
§ 103(a), and we cannot sustain the Examiner’s obviousness rejection of
claims 1, 2, 4, 5, 9, 10, 13, 17, 19, and 20 over the combination of Ben-Shaul
and Kannan. For similar reasons, because claims 3, 6–8, 11, 12, 14–16, and
18 ultimately depend from claims 1 and 9, respectively, and based on
Appellant’s reliance on the arguments presented as to claim 1 as to the
patentability of claims 3, 6–8, 11, 12, 14–16, and 18 (see Appeal Br. 34–35),
we likewise cannot sustain the Examiner’s obviousness rejections of claims
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3, 6–8, 11, 12, 14–16, and 18 over the same base combination of Ben-Shaul
and Kannan, further in view of Eda, Snider, or Wayda.

CONCLUSION
For all of the reasons above, we hold as follows:
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 9,
10, 13, 17,
19, 20
103 Ben-Shaul, Kannan 1, 2, 4, 5, 9,
10, 13, 17,
19, 20
6, 7, 14, 15 103 Ben-Shaul,
Kannan, Eda
6, 7, 14, 15
8, 16 103 Ben-Shaul,
Kannan, Snider
8, 16
3, 11, 12, 18 103 Ben-Shaul,
Kannan, Wayda
3, 11, 12, 18
Overall
Outcome
1–20

REVERSED