BMC SOFTWARE, INC.

Patent Trials and Appeals Board

Apr 2, 2021

2019005922 (P.T.A.B. Apr. 2, 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.
13/631,189 09/28/2012 Tal Beno 0081-280001/12-019-US 2370
93236 7590 04/02/2021
Brake Hughes Bellermann LLP
P.O. Box 1077
Middletown, MD 21769
EXAMINER
YU, XIANG
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
docketing@brakehughes.com
uspto@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAL BENO and
JONATHAN NEWCOMB SWIRSKY WHITNEY
Appeal 2019-005922
Application 13/631,189
Technology Center 2400
Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and
MICHAEL T. CYGAN, Administrative Patent Judges.
MANTIS MERCADER, 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 1–15 and 19–21. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as BMC SOFTWARE,
INC. by virtue of assignments, which were recorded on October 2, 2018,
October 2, 2018, September 10, 2013, and May 13, 2013 at Reel/Frame
04719/0468, Reel/Frame 047185/0744, Reel/Frame 031204/0225, and
Reel/Frame 031295/0240, respectively. Appeal Br. 3.
Appeal 2019-005922
Application 13/631,189
2
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to an elastic packaging of application
configuration. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A client computer comprising:
a processor; and
a memory, the memory including code segments that when
executed by a processor cause the processor to:
receive an application stack model including a hierarchy
of application model nodes, each application model node
associated with one or more configurable attributes of the
application on a cloud computer;
select an application model node and an associated
configurable attribute from the hierarchy of the application stack
model;
interface with an elastic configuration formula repository
having elastic configuration formulas therein, each elastic
configuration formula identifying a set of variable run-time
resources of the cloud computer that are available for the
respective configurable attribute of the application on the cloud
computer at run-time;
select the elastic configuration formula in the elastic
configuration formula repository that identifies the set of the run-
time resources of the cloud computer that are available for
selected configurable attribute of the application on the cloud
computer at run-time; and
interface the application with the selected elastic
configuration formula in an application deployment package,
wherein the selected elastic configuration formula dynamically
sets a value for the selected configurable attribute based on
resources of the cloud computer available at any given time-
when executing the application on the cloud computer.
Appeal 2019-005922
Application 13/631,189
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Winstead US 2005/0288899 A1 Dec. 29, 2005
Nagaraja US 2013/0232463 A1 Sept. 5, 2013
Breitgand US 2014/0082612 A1 Mar. 20, 2014

REJECTIONS
Claims 1, 2, 4–11, 13–15, and 19–21 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Nagaraja in view of
Breitgand. Final Act. 5.
Claims 3 and 12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Nagaraja in view of Breitgand and further in view
of Winstead. Final Act. 13.

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 4–11, 13–15, 19–
21
103(a) Nagaraja, Breitgand
3, 12 103(a) Nagaraja, Breitgand,
Winstead

OPINION
Claim 1 recites “wherein the selected elastic configuration formula
dynamically sets a value for the selected configurable attribute based on
resources of the cloud computer available at any given time when executing
the application on the cloud computer.” See claim 1 (emphasis added).
Appellant argues inter alia that Breitgand teaches changing the
amount of resources available on a virtual machine (VM) to match an
Appeal 2019-005922
Application 13/631,189
4
application loading which is the opposite of changing the application in
response to the available resources (i.e., the selected elastic configuration
formula dynamically sets a value for the selected configurable attribute
based on resources of the cloud computer available at any given time when
executing the application on the cloud computer), as described by
Appellant’s claim 1. Appeal Br. 14. The Examiner’s response of “[o]ne of
ordinary skill in the art would recognize that by combining the dynamic
capabilities of a system as taught from Breitgand, the resulting combined
system can re-allocate the amount of resources to be supplied or deployed to
a VM, based upon what is available, at any given time” (Ans. 9) does not
address Appellant’s argument.
The Examiner cites to Nagaraja for adjusting the application in
response to user input and to Breitgand for adjusting the VM resources
dynamically in response to load intensity. Final Act. 8. However, the
Examiner’s cited section of Nagaraja distinguishes the application from the
VMs deploying the application. See Nagaraja ¶ 77 (“virtual machines to
deploy . . . or modify (e.g., scale) a currently running web application).
Consequently, we are persuaded by Appellant’s argument that the Examiner
has not explained how dynamically changing the resources to the virtual
machines in response to available resources, as taught by Breitgand, would
teach or suggest dynamically changing the application in response to
available resources, as claimed.
Thus, we are constrained by the record before us to reverse the
Examiner’s rejection of claim 1 and for the same reasons the Examiner’s
rejections of claims 2–15 and 19–21.
Appeal 2019-005922
Application 13/631,189
5
CONCLUSION
The Examiner’s rejections are REVERSED.
The Examiner’s decision to reject claims 1–15 and 19–21 is
REVERSED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–11,
13–15, 19–
21
103(a) Nagaraja,
Breitgand
1, 2, 4–11,
13–15, 19–
21
3, 12 103(a) Nagaraja,
Breitgand,
Winstead
3, 12
Overall
Outcome
1–15, 19–21

REVERSED