Ex Parte Flake et al

Patent Trial and Appeal BoardApr 14, 2016

12154423 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/154,423 05/22/2008 71484 7590 04/18/2016 IV - SUITER SW ANTZ PC LLO 14301 FNB PARKWAY, SUITE 220 OMAHA, NE 68154 FIRST NAMED INVENTOR Gary W. Flake 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IV 07-25-lA 8492 EXAMINER JOHNSON, CARLTON ART UNIT PAPER NUMBER 2436 NOTIFICATION DATE DELIVERY MODE 04/18/2016 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): file@suiter.com srs@suiter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte GARY W. FLAKE, WILLIAM H. GATES III, RODERICK A. HYDE, EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, RICHARD F. RASHID, CLARENCE T. TEGREENE, CHARLES WHITMER, LOWELL L. WOOD JR., JOHN D. RINALDO JR., and MARK A. MALAMUD Appeal2014-005134 Application 12/154,423 Technology Center 2400 Before JOHNNY A. KUMAR, CATHERINE SHIANG, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 78, 91-93, 96-101, 103-111, 115-124, 135, and 146- 155, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is Searete, LLC, which is wholly owned by Intellectual Ventures Management LLC. App. Br. 4. Appeal2014-005134 Application 12/154,423 STATEMENT OF THE CASE Introduction Appellants' present application relates to determining the effect of data on a virtual machine that represents a portion of a real machine. Abstract. Claim 1 is illustrative of the subject matter on appeal and reads as follows: 1. A computationally-implemented method comprising: retrieving data from a data source; determining an effect of content of the data on a virtual machine representation of at least a part of an end user's real machine; determining an acceptability of an effect of the content of the data on the at least a part of an end user's real machine at least in part according to the effect of the content of the data on the virtual machine representation of the at least a part of an end user's real machine; and providing at least one option to the end user's real machine based on the acceptability of the effect of the content of the data on the virtual machine representation of the at least a part of an end user's real machine. The Examiner's Rejections Claims 1, 78, 91, 92, 96-101, 103-111, 115-124, 135, and 146-154 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Rail (US 20061004 7 663 A 1; Mar. 2, 2006), Schultz (US 2007 /006777 5 A 1; Mar. 22, 2007), and Muller (US 2008/0244579 Al; Oct. 2, 2008). See Ans. 6-38. 2 Appeal2014-005134 Application 12/154,423 Claim 93 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Rail, Schultz, Muller, and Garney (US 2007/0294689 Al; Dec. 20, 2007). See Ans. 38--40. Claim 155 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Rail and Schultz. See Ans. 40--42. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred. We disagree with Appellants' conclusions. Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following additional points. Appellants argue the Examiner erred in rejecting claim 1 because the cited combination, and in particular Schultz, does not teach or suggest a "virtual machine representation of at least part of an end user's real machine." See App. Br. 17-22, Reply Br. 3-8. In particular, Appellants argue Schultz does not teach or suggest a virtual machine that is a representation of at least a portion of a real machine. Appellants argue "significant textual distinctions exist between the actual recitations of Schultz and the Applicant's claims" because Schultz does not explicitly disclose a virtual machine representation of a real machine, instead disclosing first and second virtual machines having a shared memory. App. Br. 1 7, 19. According to Appellants, the Examiner "provided absolutely no 3 Appeal2014-005134 Application 12/154,423 evidence or explanation as to why, 'having a shared memory' as expressly recited by Schultz could reasonably be interpreted as a 'representation of at least a part of an end user's real machine' ... despite the clear textual distinctions between the respective recitations." App. Br. 20. Appellants have not persuaded us the Examiner erred in finding Schultz teaches or suggests a "virtual machine representation of an end user's real machine." As found by the Examiner, Schultz teaches a virtual machine that operates as a logical partition of a base computing system (the claimed "real machine"). Ans. 42 (citing Schultz iii! 13, 16, 23). The Examiner identified the virtual machine and the underlying computer upon which the virtual machine operates, which is the claimed "real machine." Appellants arguments that there are textual distinctions between Schultz and the claim language are unpersuasive because neither anticipation nor obviousness requires "an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citing Akzo 1'1. V. v. United States Int 'l Trade Comm 'n, 808 F.2d 1471, 1479 & n. 11 (Fed. Cir. 1986)); see also, Standard Havens Prods. V. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991) ("An anticipatory reference, however, need not duplicate word for word what is in the claims."). In the Reply Brief, Appellants argue the Examiner's citations in the Answer to more specifically identify Schultz's teaching of the claimed "real machine" constitute new matter. See Reply Br. 4-8. We disagree. In the Answer, the Examiner responds to Appellants' argument that Schultz does not disclose a "real machine" by citing to portions of Schultz already cited for this proposition (e.g., Schultz iJ 16). The Examiner also cites to additional portions of Schultz, Appellants' Specification, and a Wikipedia 4 Appeal2014-005134 Application 12/154,423 entry regarding virtual machine, but these citations are in direct response to Appellants' argument that Schultz's virtual machine is not a representation of a "real machine." See Ans. 42 (citing App. Br. 18: 11-12), Ans. 45 (citing App. Br. 18:14-16), Ans. 46 (citing App. Br. 18:18-20, 20:2-6), Ans. 47 (citing App. Br. 22:2-6). Moreover, the Examiner's additional citations do not change the Examiner's rationale that Schultz teaches a virtual machine operating on an end user's real machine, nor do these citations change the thrust of the Examiner's rejection. See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976); see also In re Krammes, 314 F.2d 813, 817 (CCPA 1963) ("It is well established that mere difference in form of expression of the reasons for finding claims unpatentable or unobvious over the references does not amount to reliance on a different ground of rejection."). Appellants further argue the Examiner erred because an ordinarily skilled artisan would not have been motivated to combine Rail and Schultz as proposed. See ,,L\ .. pp. Br. 22-27, Reply Br. 8-9. In particular, Appellants argue Rail and Schultz operate through different mechanisms based upon different principles and an ordinarily skilled artisan would not expect the combination to produce a functional system. App. Br. 22-23. Appellants argue the Examiner's stated rationale is conclusory, nothing more than an achieved benefit without any factual support. App. Br. 25-27. Appellants also argue the Examiner's rationale is impermissible hindsight. App. Br. 24-25. Finally, Appellants argue the Examiner failed to identify any express language in Rail or Schultz that discusses modifying Rail to include a virtual machine. Id. Appellants have not persuaded us the Examiner erred in finding an ordinarily skilled artisan would have been motivated to combine Rail and 5 Appeal2014-005134 Application 12/154,423 Schultz. As found by the Examiner, an ordinarily skilled artisan would have been motivated to combine the teachings of Rail and Schultz to achieve the benefit of an efficient manner for communicating or transferring data from one virtual machine to another. See Final Act. 11 (citing Schultz iJ 14 ). Appellants' argument that the Examiner has failed to identify any teachings in Rail or Schultz that would provide an ordinarily skilled artisan motivation to combine the references is unpersuasive because such a teaching is not necessary. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Moreover, although the Supreme Court in KSR stated that "[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning" (id. at 421 ), we are satisfied that the combination of Rail and Schultz is not based on hindsight bias. In fact, the proposed combination involves nothing other than requiring the ordinarily skilled artisan to use common sense in combining prior art elements that perform their ordina~; functions to predictably result in the claimed system. On this record, and by the preponderance of evidence, we find the Examiner set forth sufficient "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). CONCLUSIONS On the record before us and in view of the analysis above, Appellants has not persuaded us that the Examiner erred in rejecting claim 1 as unpatentable over Rail, Schultz, and Muller. Therefore, we sustain the rejection of claim 1under35 U.S.C. Â§ 103(a) as unpatentable over Rail, Schultz, and Muller. Appellants argue the patentability of claims 78 and 155 6 Appeal2014-005134 Application 12/154,423 based on the same reasons presented for claim 1. See App. Br. 16. We, therefore, sustain the rejection of claims 78 and 155. We also sustain the rejection of claims 91-93, 96-101, 103-111, 115-124, 135, and 146-154, which were not argued separately. See App. Br. 16-28. DECISION The decision of the Examiner to reject claims 1, 78, 91-93, 96-101, 103-111, 115-124, 135, and 146-155 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 7