VMware, Inc.

Patent Trials and Appeals Board

Mar 22, 2022

2021000128 (P.T.A.B. Mar. 22, 2022)

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. 14/736,089 06/10/2015 Matthew Conover C208.C1 4026 152691 7590 03/22/2022 Setter Roche LLP 1860 Blake Street Suite 100 Denver, CO 80202 EXAMINER WU, JUNCHUN ART UNIT PAPER NUMBER 2191 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): ipadmin@vmware.com uspto@setterroche.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW CONOVER Appeal 2021-000128 Application 14/736,089 Technology Center 2100 Before JOSEPH L. DIXON, JAMES R. HUGHES, and JASON J. CHUNG, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 6-22 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1-2.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies the real party (parties) in interest as VMware, Inc. and Nicira, Inc. Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed June 10, 2015 (claiming benefit of US 13/926,207, filed June 25, 2013; and US 61/663,824, filed June 25, 2012); Appeal Brief (“Appeal Br.”), filed June 24, Appeal 2021-000128 Application 14/736,089 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, generally relates to “for computer application installation.” Abstr. More specifically, Appellant’s claimed subject matter is directed to apparatuses and methods for installing an application on a computer system. The exemplary method uses an application installer and monitors the computer system to identify an attempt (by the application installer) to locate components shared between an application to be installed and one or more previously installed applications. Responsive to a detected attempt, the method indicates an absence of the components to the application installer even when a subset of the components was previously installed on the system in association with a different application(s). The indication prompts the installer to install another version of the components in addition to the subset of the components that was previously installed. See Spec. ¶¶ 2-7; Abstr. Claim 6 (directed to a method), claim 12 (directed to an apparatus), and claim 21 (directed to an apparatus) are independent. Claim 6, reproduced below, is illustrative of the claimed subject matter: 1. A method of influencing an application installation on a computing system, the method comprising: in a processing system of the computing system, monitoring for an application installer to attempt to locate components shared between an application to be installed by the application installer and at least one other application that is presently installed; and in response to the attempt by the application installer, indicating an absence of the components to the application 2020; and Reply Brief (“Reply Br.”), filed Oct. 2, 2020. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Jan. 24, 2020; and Answer (“Ans.”), mailed Aug. 3, 2020. Appeal 2021-000128 Application 14/736,089 3 installer even though at least a subset of the components was previously installed in association with one or more other applications, and wherein the indication prompts the installer to install another version of the components in addition to the subset of the components that was previously installed. Appeal Br. 9 (Claims App.) (emphases added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Fors et al. (“Fors”) US 2006/0123414 A1 June 8, 2006 Kyle et al. (“Kyle”) US 7,203,937 B1 Apr. 10, 2007 Cohen et al. (“Cohen”) US 2009/0037904 A1 Feb. 5, 2009 Bernardi et al. (“Bernardi”) US 2009/0044170 A1 Feb. 12, 2009 Davis et al. (“Davis”) US 7,735,079 B1 June 8, 2010 Peterson et al. (“Peterson”) US 2012/0054273 A1 Mar. 1, 2012 Risbood et al. (“Risbood”) US 8,261,295 B1 Sept. 4, 2012 (filed Sept. 28, 2011) Osada (“Osada”) US 2012/0297242 A1 Nov. 22, 2012 (filed May 16, 2012) REJECTIONS3 1. The Examiner rejects claims 6, 10, 12, 16-18, and 21 under 35 U.S.C. § 103(a) as being as being unpatentable over Davis, Osada, and Peterson. See Final Act. 2-5. 2. The Examiner rejects claims 7, 8, 13, 14, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Davis, Osada, Peterson, and Bernardi. See Final Act. 5-7. 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date prior to the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 103(a). Appeal 2021-000128 Application 14/736,089 4 3. The Examiner rejects claims 9 and 15 under 35 U.S.C. § 103(a) as being as being unpatentable over Davis, Osada, Peterson, Cohen, and Fors. See Final Act. 7-9. 4. The Examiner rejects claims 11 and 20 under 35 U.S.C. § 103(a) as being unpatentable over Davis, Osada, Peterson, and Kyle. See Final Act. 9. 5. The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as being unpatentable over Davis, Osada, Peterson, and Risbood. See Final Act. 10. ANALYSIS Obviousness Rejection of Claims 6, 10, 12, 16-18, and 21 The Examiner rejects claim 6 (as well as independent claims 12 and 21, and dependent claims 10 and 16-18) as being obvious in view of Davis, Osada, and Peterson. See Final Act. 2-4; Ans. 4-6. Specifically, the Examiner relies on Davis for teaching an application installer that performs an attempt to locate shared components (components shared between an application to be installed and other application(s) previously (presently) installed. See Final Act. 2-3 (citing Davis 8:39-46; Fig. 4); Ans. 4-5. The Examiner relies on Osada for teaching the presence or absence of application program components. See Final Act. 3-4 (citing Osada ¶ 44); Ans. 4-5. The Examiner also relies on Peterson for teaching installation of different versions of application components in addition to a subset of the component that was previously installed. See Final Act. 4 (citing Peterson ¶ 89); Ans. 5-6. Appeal 2021-000128 Application 14/736,089 5 Appellant contends that Davis, Osada, and Peterson do not teach the disputed limitations of claim 6. See Appeal Br. 3-6; Reply Br. 2-3. Specifically, Appellant contends, inter alia, that the Examiner-cited portions of Davis and Osada do not disclose, teach, or suggest the features for which the Examiner cited the references: Osada merely describes determining whether an application that was previously installed on a device still exists on the device. Claim 6 does not describe determining whether an application exists, but rather indicates that components for an application do not exist even though they were installed with one or more other applications. Osada fails to describe indicating an absence of components installed in association with other applications. Instead, Osada determines whether the same application is still installed. . . . In fact, while Davis indicates that applications can share components, Davis teaches away from the operations of claim 6, where Davis indicates that applications can share components rather than installing another version of the shared components, as provided for in claim 6. Reply Br. 2-3; see Appeal Br. 3-5. As articulated by the Federal Circuit, the Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections”). “A rejection based on section 103 clearly must rest on a factual basis[.]” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. We conclude the Examiner’s Appeal 2021-000128 Application 14/736,089 6 analysis fails to meet this standard because the rejection does not explain adequately the Examiner’s findings of fact. We agree with Appellant that the Examiner has not shown persuasively that the combination of Davis, Osada, and Peterson describes the features of the application installation method as set forth in claim 6. See Appeal Br. 3-6; Reply Br. 2-3. Specifically, the Examiner does not show adequately how Davis and Osada teach making a determination (locating) a subset of the components of an application that were previously installed on a computer system, and indicating (to an application installer) that the subset of components is absent “even though at least a subset of the components was previously installed in association with one or more other applications” (claim 6). The Examiner-cited portions of Davis and Osada merely describe determining the presence or absence of the previously installed components of an application (shared components). See Davis 8:39-46; Fig. 4 and Osada ¶ 44. Claim 1 requires “indicating an absence of the components to the application installer even though . . . a subset of the components was previously installed in association with . . . other applications” responsive to (“in response to”) an attempt by the application installer “to locate components shared between an application to be installed . . . and [another] application that is presently installed.” Appeal Br. 9 (Claims App.). That is, the indication is responsive to the attempt. The Examiner-cited portions of Davis and Osada do not disclose an absence indication when shared components are located. The Examiner does not explain sufficiently how Davis and Osada teach this feature with the required clarity. See Final Act. 2-4; Ans. 4-6. Appeal 2021-000128 Application 14/736,089 7 “When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. §1.104(c)(2) (2019) (emphasis added). Here, the Examiner has not provided the requisite mapping or a sufficient explanation of the pertinence of the cited portions of the prior art. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Davis, Osada, and Peterson renders obvious Appellant’s claim 6. Independent claims 12 and 21 include limitations of commensurate scope. Claims 10 and 16-18 depend from and stand with their respective base claims. Thus, we do not sustain the Examiner’s obviousness rejection of claims 6, 10, 12, 16-18, and 21. Obviousness Rejection of Claims 7-9, 11, 13-15, 19, 20, and 22 The Examiner rejects claims 7, 8, 13, 14, and 22 as obvious over Davis, Osada, Peterson, and Bernardi. See Final Act. 5-7. The Examiner also rejects claims 9 and 15 as obvious over Davis, Osada, Peterson, Cohen, and Fors. See Final Act. 7-9. The Examiner further rejects claims 11 and 20 as obvious over Davis, Osada, Peterson, and Kyle. See Final Act. 9. The Examiner additionally rejects claim 19 as obvious over Davis, Osada, Peterson, and Risbood. See Final Act. 10. As discussed with respect to claim 6 (supra), the Examiner does not show sufficiently that the cited prior art teaches or suggests the recited features and functionality of the claims. Therefore, we do not sustain the Examiner’s obviousness rejection of claims Appeal 2021-000128 Application 14/736,089 8 7-9, 11, 13-15, 19, 20, and 22 for the same reasons set forth for claim 6 (supra). CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 6-22 as being obvious under 35 U.S.C. § 103(a). We, therefore, do not sustain the Examiner’s rejection of claims 6-22. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 6, 10, 12, 16-18, 21 103(a) Davis, Osada, Peterson 6, 10, 12, 16-18, 21 7, 8, 13, 14, 22 103(a) Davis, Osada, Peterson, Bernardi 7, 8, 13, 14, 22 9, 15 103(a) Davis, Osada, Peterson, Cohen, Fors 9, 15 11, 20 103(a) Davis, Osada, Peterson, Kyle 11, 20 19 103(a) Davis, Osada, Peterson, Risbood 19 Overall Outcome 6-22 REVERSED