VMware, Inc.

Patent Trials and Appeals Board

Sep 28, 2021

2020000918 (P.T.A.B. Sep. 28, 2021)

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.
15/687,057 08/25/2017 Reza Taheri B247.C1 7452
152606 7590 09/28/2021
Olympic Patent Works PLLC
4979 Admiral Street
Gig Harbor, WA 98332
EXAMINER
UNG, LANNY N
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
09/28/2021 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 REZA TAHERI, KALYAN SALADI,
DANIEL MICHAEL HECHT, JIN HEO, and JEFFREY BUELL
Appeal 2020-000918
Application 15/687,057
Technology Center 2100
Before ELENI MANTIS MERCADER, JENNIFER L. McKEOWN, and
MICHAEL T. CYGAN, Administrative Patent Judges.
MCKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. 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(a). Appellant identifies the real party in interest as VMWARE, INC.
Appeal Br. 1.
Appeal 2020-000918
Application 15/687,057
2
CLAIMED SUBJECT MATTER
The claims are directed to “virtualization of computer hardware and
hardware-based performance monitoring and, in particular, to a virtualized
performance-monitoring unit decoupled from underlying hardware features.”
Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A cloud-computing facility comprising:
multiple computer systems, each including
one or more processors,
one or more memories, and
a virtualization layer comprising computer
instructions, stored in a physical data-storage device
within the computer system, that, when executed by one
or more of the one or more processors, control the
computer system to
provide a virtual hardware interface to a virtual
machine that includes a guest operating system; and
provide, as a component of the virtual hardware
interface, a set of hardware-decoupled virtual performance
monitoring registers that are accessed by the guest
operating system, that are provided by the virtualization
layers of the other of the multiple computer systems so that
the guest operating system accesses the same set of
hardware-decoupled virtual performance monitoring
registers when the virtual machine migrates among the
multiple computer systems, and that includes a hardware-
decoupled virtual performance monitoring register that
accumulates a count of the occurrence of an event of a type
that is not accumulated by the hardware performance
monitoring registers of one or more of the processors of
one or more of the multiple computer systems.
REFERENCE(S)
The prior art relied upon by the Examiner is:
Appeal 2020-000918
Application 15/687,057
3
Name Reference Date
Taheri US 9,756,118 B2 Sept. 5, 2017
Bose US 2012/0245897 A1 Sept. 27, 2012
Serebrin US 2013/0219389 A1 Aug. 22, 2013

REJECTIONS
The Examiner rejected claims 1 and 15 under nonstatutory double
patenting as unpatentable over claims 1 and 12 of U.S. Patent No. 9,756,118
and Serebrin. Final Act. 3–11.
The Examiner rejected claims 1–4 and 7–18 under 35 U.S.C. § 102 as
anticipated by Serebrin. Final Act. 11–18.
The Examiner rejected claims 5, 6, 19 and 20 under 35 U.S.C. § 103
as unpatentable over Serebrin and Bose. Final Act. 18–20.

OPINION
THE ANTICIPATION REJECTION BASED ON SEREBRIN
Claims 1–4 and 7–18
Appellant argues that “cloud-computing facility” in the preamble is
entitled to patentable weight because “cloud-computing facility” is not part
of a statement of purpose or intended use and “comprises the entire
preamble.” Reply Br. 3. Appellant maintains that the Examiner incorrectly
applied the test set forth in MPEP §2111.02 and instead points to Eaton
Corp. v. Rockwell International Corp., 323 F.3d 1332 (Fed. Cir. 2003). Id.
Moreover, Appellant argues Serebrin fails to disclose the claimed cloud-
computing facility. Reply Br. 5. According to Appellant, “[w]hile Serebrin
does mention moving a virtual machine to another computer system, in
paragraphs [0085-0088] with reference to Figure 6 of Serebrin, Serebrin
Appeal 2020-000918
Application 15/687,057
4
does not mention anything about cloud-computing facilities.” Appeal Br.
11.
Appellant argues that the Specification describes a cloud-computing
facility as “a distributed computing system that provides certain types of
functionalities and interfaces.” Reply Br. 3–4 (citing Spec. Fig. 3, ¶¶ 37–
38). Appellant further cites exemplary embodiments that are not cloud
computing. See Reply Br. 4 (“There are many different types of distributed
computing systems, including private data centers and private virtual data
centers, which employ virtual-machine technology and that are not cloud-
computing facilities.”); Reply Br. 5 (asserting that Specification paragraph
35, along with Figure 2, describes “Internet-connected distributed computer
system, which are not cloud computing facilities” and Specification
paragraph 47 describes virtual data centers, which “provide a data-center
interface to virtual data centers computationally constructed within physical
data centers” but are also not cloud computing facilities).
The Examiner, on the other hand, determines that the recited “cloud-
computing facility” in the preamble is not limiting. The Examiner reasons
that “‘cloud-computing facility’ is simply a name of the system.” The
Examiner points out that “[i]f the Appellant was to change the language to
‘A system comprising,’ it would have the same meaning as ‘A cloud-
computing facility comprising.” Ans. 27. Moreover, the Examiner
determines that “[t]he managing of the migration of a virtual machine from
one computing system to another where virtual counters are maintained can
be reasonably considered a ‘cloud-computing facility’ as multiple computing
systems are linked to each other to perform a task.” Ans. 27–28. See also
Ans. 24 (“Serebrin discloses ‘cloud-computing facility’ and ‘multiple
Appeal 2020-000918
Application 15/687,057
5
computer systems’ in Paragraphs 86 and 87 which discuss the migration of a
virtual machine from multiple computing systems.”).
“Whether to treat a preamble as a limitation is a determination
‘resolved only on review of the entire[] . . . patent to gain an understanding
of what the inventors actually invented and intended to encompass by the
claim.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (quotations omitted). “In general, a preamble limits the
invention if it recites essential structure or steps, or if it is ‘necessary to give
life, meaning, and vitality’ to the claim.” Id. “Conversely, a preamble is not
limiting ‘where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention.’” Id.
We are not persuaded of error in the Examiner’s determination. For
example, Appellant’s reliance on Eaton Corp. v. Rockwell International
Corp., 332, 339 F.3d 1332 (Fed. Cir. 2003) is misplaced. In Eaton Corp.,
the two method steps of the claim body both referred back to or relied upon
multiple components described in the preamble. See Eaton Corp. v.
Rockwell International Corp., 332, 339 F.3d 1332, 1340 (Fed. Cir.
2003)(“The method steps of claim 14 thus require the manipulation of
particular structures that are identified and described only by the preamble,
during a particular sequence of events defined only by the preamble.”). In
contrast, the preamble here merely recites a “cloud computing” use for the
claimed facility.
Moreover, we disagree that the “cloud computing” preamble is used
to define the subject matter of the claimed invention. As the Examiner
points out, the body of the claim outlines a structurally complete system,
without the need for or reference to cloud computing. Ans. 27. The
Appeal 2020-000918
Application 15/687,057
6
limitations of the claims do not rely on or refer to cloud computing or a
cloud computing facility. And the Specification, as Appellant points out,
does not limit the claimed invention to only cloud computing, but instead
generally describes applying virtualized performance monitoring units
(PMUs) with various distributed computing systems. See, e.g., Reply Br. 4–
5; Spec. Summary. As such, we are not persuaded that the Examiner erred
in determining that the recited cloud computing is merely an intended use of
the claimed invention.
Appellant’s argument with respect to Serebrin is likewise unavailing.
Serebrin’s lack of “mentioning” cloud computing is not persuasive to
identify error. There is no ipsissimis verbis test for determining whether a
reference discloses a claim element, i.e., identity of terminology is not
required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Additionally, Appellant fails to define cloud computing, either in the
Specification or with extrinsic evidence. In the Reply Brief, Appellant
offers that “[a] cloud-computing facility is a distributed computing system
that provides certain types of functionalities and interfaces, as explained in
the current application,” but cites only to a general discussion of how
organization administrators can use private and public cloud computing and
some of the advantages of cloud computing. See Reply Br. 4 (citing Spec.
37–38). Nowhere does Appellant persuasively explain the “certain types of
functionalities and interfaces” of cloud computing. As such, based on the
record before us, we are not persuaded of error in the Examiner’s
interpretation of cloud computing and the Examiner’s finding that Serebrin
reasonably teaches this limitation. See, e.g., Ans. 27–28.
Next, Appellant argues that Serebrin does not disclose the claimed
Appeal 2020-000918
Application 15/687,057
7
set of hardware-decoupled virtual performance monitoring
registers. . . that are provided by the virtualization layers of the
other of the multiple computer systems so that the guest
operating system accesses the same set of hardware-decoupled
virtual performance monitoring registers when the virtual
machine migrates among the multiple computer systems.
Appeal Br. 14–18. Appellant, in particular, asserts that “neither Figure 6 of
Serebrin nor paragraphs [0085-0088] teaches either hardware-decoupled
virtual performance monitoring registers or a common set of hardware-
decoupled virtual performance monitoring registers provided by the multiple
computer systems within a cloud-computing system.” Appeal Br. 14.
According to Appellant, Serebrin, “does not attempt to provide a
common set of hardware performance counters across multiple machines.”
Appeal Br. 15. Specifically,
There is nothing in Figure 6 or in paragraphs [0085-0088] of
Serebrin that states or teaches that Serebrin’s virtual performance
counters count the same types of events in the first system prior
to migration and in the second system following migration, but
only that the counts are stored and that, when the processors of
the two systems differ, the counts are converted and the hardware
performance counters are reconfigured to count new types of
events.
Appeal Br. 15.
Appellant’s arguments, however, are not commensurate with the
scope of the claim. Namely, the claims do not recite a common set of
hardware performance counters across multiple machines nor do the claims
require counting the same types of events before and after migration.
Serebrin discloses migrating virtualized performance counters with the
migrated virtual machine with a harmonization layer reconfiguring the
virtualized performance counters. Serebrin ¶¶ 85–87. In other words,
Serebrin’s harmonization layer accesses the same set of migrated virtualized
Appeal 2020-000918
Application 15/687,057
8
performance counters, provided by other computing systems, when the
virtual machine migrates among multiple computer systems. As such, we
find Appellant’s arguments unpersuasive.
Appellant additionally argues that Serebrin fails to disclose including
“a hardware-decoupled virtual performance monitoring register that
accumulates a count of the occurrence of an event of a type that is not
accumulated by the hardware performance monitoring registers of one or
more of the processors of one or more of the multiple computer systems.”
Appeal Br. 15. Specifically, Appellant asserts that Serebrin’s virtual
performance counters only count the same type of events as the hardware
performance counters. Appeal Br. 15–16. For example, Serebrin describes
that the virtual performance counters emulates physical hardware
performance counters. Appeal Br. 16.
We disagree. As the Examiner points out, Serebrin teaches a “virtual
counter can be paravirtualized counters which can be specific to a virtualized
environment (e.g. are not present in native execution environments) such as
hypervisor-specific counters and/or virtualization-specific counters.”
Ans. 29 (citing Serebrin ¶ 57). In other words, Serebrin teaches counting
virtualized events, or events not accumulated by hardware performance
monitoring registers. As such, we are not persuaded of error in the rejection
of the claimed invention as anticipated by Serebrin.
Appellant’s arguments with respect to dependent claims 2–4 are
similarly unpersuasive. With respect to claims 2 and 3, Appellant asserts
Serebrin teaches only teaches that a performance metric may be calculated
from values stored in two or more performance counters. Appeal Br. 16.
According to Appellant,
Appeal 2020-000918
Application 15/687,057
9
Performance metrics are calculated values used by profile
software. They are not virtual performance counters or hardware-
decoupled virtual performance monitoring registers. There is
nothing in this paragraph that even remotely suggests that any of
Serebrin's virtual performance counters count events of different
types and counted by the underlying physical hardware
performance counters. Metrics values are derived values
computed by software profilers.
Appeal Br. 16. Additionally, with respect to claim 4, Appellant similarly
argues the Examiner incorrectly relies on “values calculated by software
profiler are unrelated to virtual performance counters or hardware
performance counters.” Appeal Br. 17.
We are not persuaded of error in the Examiner’s rejection of claims 2–
4. Claim 2 merely requires a virtual monitoring register that accumulates a
count of an event derived from two or more hardware monitoring registers
and claim 4 recites that the count of the event is derived by computing an
approximate count. Serebrin describes performance monitoring counters
that can count a variety of events, including speculative and non-speculative
events, and a hypervisor virtualizing performance monitoring counters.
Serebrin ¶ 16, 18. As the Examiner points out “Serebrin discloses that
virtual counters can be measured based on multiple hardware counters.”
Ans. 34 (citing Serebrin ¶ 56); see also Serebrin ¶ 38 (describing virtual
counters emulating the event counters).
Additionally, Serebrin, like the present invention, teaches monitoring
non-speculative events, i.e. processor events, and speculative events, i.e.
approximated processor events. Serebrin ¶ 33. As such, based on the record
before us, we are not persuaded that the Examiner erred in determining that
Serebrin discloses the disputed limitations of claims 2–4.

Appeal 2020-000918
Application 15/687,057
10
Accordingly, based on the record before us, we sustain the rejection of
claims 1–4 and 7–18 as anticipated by Serebrin.

THE OBVIOUSNESS REJECTION BASED ON SEREBRIN AND BOSE
Claims 5, 6, 19, and 20
Appellant does not present separate arguments for the patentability of
dependent claims 5, 6, 19, and 20. See, e.g., Appeal Br. 19. For the reasons
discussed above, we are not persuaded that Serebrin fails to disclose the
limitations of independent claims 1 and 15. As such, we are also not
persuaded of error in the rejection of claims 5, 6, 19, and 20 as unpatentable
over Serebrin and Bose and sustain the rejection.

THE NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
Claims 1 and 15
Initially, Appellant argues that U.S. Patent No. 9,756,118 fails to
disclose certain limitations of claim 1 and 15. Appeal Br. 8–11. The
Examiner, however, clarifies that the rejection relies on Serebrin for those
disputed limitation. Ans. 23–24. Appellant then presents the same
arguments with respect to Serebrin discussed above. See Appeal Br. 8–13;
Reply Br. 2–9. For the reasons discussed above, we are not persuaded that
Serebrin fails to teach the disputed limitations of claims 1 and 15. As such,
we are not persuaded that the Examiner erred in rejecting claims 1 and 15
under nonstatutory obviousness-type double patenting and sustain the
rejection.

Appeal 2020-000918
Application 15/687,057
11

CONCLUSION
The Examiner’s rejections of claims 1–20 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 15 Nonstatutory Double
Patenting US 9,756,118,
Serebrin
1, 15
1–4, 7–18 102 Serebrin 1–4, 7–18
5, 6, 19, 20 103 Serebrin, Bose 5, 6, 19, 20
Overall
Outcome
1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED