Ex Parte Blum

Patent Trial and Appeal Board

Mar 14, 2017

13213265 (P.T.A.B. Mar. 14, 2017)

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.
13/213,265 08/19/2011 Thomas Blum P11.0176 (26965-4673) 7943
26574 7590 03/16/2017
SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
EXAMINER
JEON, JAE UK
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
patents-CH @ schiffhardin.com
jbombien @ schiffhardin. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BLUM
Appeal 2016-002857
Application 13/213,265
Technology Center 2100
Before CAROLYN D. THOMAS, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—3, 6, and 8—18, which are all of the pending
claims.1 We have jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm.
1 Claims 4, 5, and 7 have been canceled. (Final Act. 2.)
Appeal 2016-002857
Application 13/213,265
Introduction
According to Appellant, “[t]he present invention concerns a system of
the type having a production system for data processing, in particular image
data processing, and a prototype system, wherein the production system has
a first runtime environment and the prototype system has a second runtime
environment that is designed to be separate from the production runtime
environment. The invention also concerns a method for operating such a
system.” (Spec. 1.)
Exemplary Claim
Claim 1, reproduced below with disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A computerized system comprising:
a production system comprising a production system computer
configured to perform a data processing task with a first
system configuration that is fully tested, said production
system having a production runtime environment in which
said production system computer is configured to perform
said data processing task,
a prototype system comprising a prototype system computer
configured to perform said data processing task with a
second configuration that is untested in said production
runtime environment, said prototype system having a
prototype runtime environment that is separate from said
production runtime environment and in which said
prototype system computer is configured to perform said
data processing task;
said prototype runtime environment and said production runtime
environment being substantially identical, and
said production system computer being separate from said
prototype system computer so that performance of said data
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Application 13/213,265
processing task by said prototype system computer in said
prototype system environment does not affect said
production system computer in said production system
environment.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Aizenbud-Reshef et al.
Goodman et al.
Monnie et al.
Wedel
Mahalingam et al.
Cuomo et al.
Staelin et al.
US 2002/0120919
US 2003/0177186
US 2005/0097567
US 2008/0292156
US 2008/0294808
US 2009/0210873
US 2012/0117565
Al Aug. 29, 2002
Al Sept. 18,2003
Al May 5, 2005
Al Nov. 27, 2008
Al Nov. 27, 2008
Al Aug. 20, 2009
Al May 10, 2012
REJECTIONS
Claims 1 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cuomo and Aizenbud-Reshef. (Final Act. 2—5.)
Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cuomo, Aizenbud-Reshef, and Wedel. (Final Act. 6—7.)
Claims 3 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cuomo, Aizenbud-Reshef, and Staelin. (Final Act. 7—9.)
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cuomo, Aizenbud-Reshef, and Mahalingam. (Final Act.
9-11.)
Claims 9-11 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cuomo, Aizenbud-Reshef, Mahalingam, and Goodman.
(Final Act. 11—15.)
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Claims 12, 13, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cuomo, Aizenbud-Reshef, Staelin, and Monnie.
(Final Act. 16—18.)
ISSUES
(1) Whether the Examiner erred in finding the combination of
Cuomo and Aizenbud-Reshef teaches or suggests “said production system
having a production runtime environment,” and “said prototype system
having a prototype runtime environment that is separate from said
production runtime environment,” as recited in independent claim 1 and
commensurately recited in independent claim 15.
(2) Whether the Examiner erred in finding the combination of
Cuomo and Aizenbud-Reshef teaches or suggests “said prototype runtime
environment and said production runtime environment being substantially
identical,” as recited in independent claim 1 and commensurately recited in
independent claim 15.
(3) Whether the Examiner erred in finding the combination of
Cuomo and Aizenbud-Reshef teaches or suggests “said production system
computer being separate from said prototype system computer,” as recited in
independent claim 1 and commensurately recited in independent claim 15.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred. We disagree with Appellant’s
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2—
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19) and (2) the reasons set forth by the Examiner in the Examiner’s Answer
in response to Appellant’s Appeal Brief. (Ans. 3—29.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis.2
A. “production runtime environment” and “prototype runtime
environment ”
The Examiner finds Cuomo teaches or suggests the limitations of
claim 1, except for the “production runtime environment” and “prototype
runtime environment” limitations, which the Examiner finds are taught or
suggested by Aizenbud-Reshef. (Final Act. 2-4.) The Examiner
additionally finds the ordinarily skilled artisan would be motivated to
combine the teachings of these references. {Id. at 5.)
Appellant argues the Examiner’s findings are in error because,
although Cuomo teaches “each of the VM [virtual machine] images 160
provides a computing environment for one or more applications 170,” the
“respective computing environments of the VM images ... are not for a
production system that has a production runtime environment.” (App. Br. 5
(emphasis added).) Appellant’s argument is not persuasive, however,
because it fails to address the Examiner’s findings, which are premised on
the combination of Cuomo and Aizenbud-Reshef. It is well established that
one cannot show nonobviousness by attacking references individually where
the rejection is based on a combination of references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1098 (Fed.
Cir. 1986).
2 Only those arguments made by Appellant has been considered in this
decision. Arguments Appellant does not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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In particular, the Examiner finds:
[T]he secondary reference, Aizenbud-Reshef, was cited in the
last Office Action to teach of the runtime aspect of the production
system or environment while Cuomo teaches of a production
system. Aizenbud-Reshef specifically teaches of the production
runtime environment in several paragraphs that in par 21,
enterprises having a message broker in productive use for routing
and transforming messages will typically prefer a runtime
simulation or execution on a test and debugging system which is
integrated within the development environment, rather than
extending their run-time production system, and in par 102,
monitoring the execution of the program on a broker [for the test­
debugging system] which is separate from a run-time production
system, to enable debugging, and par 112, executing in a test and
debugging system separate from the run-time production system,
and in par 114, testing and debugging activities are separated
from the run-time production system.
(Ans. 25; see also Final Act. 4—5.) In other words, the Examiner relies upon
Aizenbud-Reshef, not Cuomo, to teach runtime environments. We agree the
Examiner’s findings are supported by the teachings of the cited reference.
B. “said prototype runtime environment and said production runtime
environment being substantially identical ”
Appellant additionally argues error in the Examiner’s finding that the
prior art teaches or suggests “said prototype runtime environment and said
production runtime environment being substantially identical” because
“there is no teaching or suggestion in [Aizenbud-Reshef] that the test and
debugging system ... is designed to be the same as a production run
system.” (App. Br. 6 (emphasis added).) We do not find Appellant’s
argument persuasive because we disagree with Appellant’s characterization
of the cited reference. The Examiner finds, and we agree, “Aizenbud-
Reshef suggests in par 112-115 that a preferred solution is to leave the
runtime environment substantially unchanged, and introduce special ‘debug
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instructions’ into the message flow 80 being tested.” (Ans. 28 (emphasis
added).)
Appellant’s argument is also unpersuasive because it fails to address
the Examiner’s finding premised on the combination of Aizenbud-Reshef
and Cuomo. Keller, 642 F.2d at 425. As the Examiner notes:
Moreover, Cuomo was cited in the last Office Action to teach
this specific claim limitation that in par 12 and 26 and Fig. 2 and
4, the same VM image and container is being duplicated or re­
tasked for two different purposes and roles, one for the
production and the other for the testing [prototype] without
requiring an end user to support different host computing
platforms for each role and those VMs are managed by the
hypervisor. Therefore, the two systems are in the same hosting
computing platform and thus substantially identical.
(Ans. 28 (emphasis added); see also Final Act. 18—19.) We agree the
Examiner’s findings are supported by the teachings of the cited reference.
C. “said production system computer being separate from said prototype
system computer ”
Appellant also argues the Examiner’s findings are in error because
“there is no . . . teaching or suggestion that the testing and debugging system
disclosed in the Aizenbud-Reshef et al. reference is executed in a computer
that is separate from the runtime computer itself.” (App. Br. 6 (emphasis
added).) We disagree. The Examiner finds Aizenbud-Reshef teaches “the
run-time production system being executed separate from the test/debugging
[prototype] system in paragraphs 101-102, 112, 113, and 114.” (Ans. 28.)
The Examiner additionally finds Cuomo teaches separate computing
environments that can each perform a different role: “Cuomo teaches in par
12, the computing environment provided by VM image for the selected role
can include a test environment, and the different computing environment
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provided by VM image for the new role can include a production
environment.” {Id. at 26; see also Final Act. 19.) We agree the Examiner’s
findings are supported by the teachings of the cited reference.
D. Motivation To Combine
In the Reply Brief, Appellant also argues that the Examiner “has
provided no persuasive reason as to why a person of ordinary skill in the
relevant technology would be motivated or guided to combine the teachings
of [the cited] references.” (Reply Br. 3.) We recognize the Examiner must
articulate “reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
However, the Examiner’s reasoning need not appear in, or be suggested by,
one or more of the references on which the Examiner relies. Instead, a
reason to combine teachings from the prior art “may be found in explicit or
implicit teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem to be
solved.” IVMS Gaming Inc. v. Inti Game Tech., 184 F.3d 1339, 1355 (Fed.
Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
“Under the correct [obviousness] analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Here, the Examiner has provided a sufficient rationale for the
motivation for a person of ordinary skill in the art to have combined the
references to achieve the claimed subject matter. (Final Act. 5; Ans. 29.)
Specifically, the Examiner finds combining the teachings of Cuomo and
Aizenbud-Reshef “can help optimize the performance of the developer who
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uses the production system and protect the production system from the test
and debugging system, by using the separate run-time environment systems
[paragraph 21, Aizenbud-Reshef].” (Final Act. 5; see also Ans. 29.)
Appellant has not provided persuasive evidence or a line of reasoning
explaining why such rationale is erroneous or why a person of ordinary skill
in the art would not have reached the conclusions reached by the Examiner.
See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[T]he proper question is
whether the ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.”).
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1, or of
independent claim 15, which Appellant argues collectively with claim 1.
Therefore, we sustain the rejection of those claims.
We likewise sustain the Examiner’s obviousness rejections of
dependent claims 2, 3, 6, 8—14, and 16—18 over the additionally cited prior
art listed above. Appellant has not particularly pointed out errors in the
Examiner’s reasoning regarding the additional teachings of the further cited
art, but merely asserts patentability based upon these claims’ dependency
from independent claims 1 and 15. (App. Br. 10—12.)
DECISION
For the above reasons, the Examiner’s rejection of claims 1—3, 6, and
8—18 is affirmed.
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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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