BMC SOFTWARE, INC.

Patent Trials and Appeals Board

Mar 2, 2021

2019005761 (P.T.A.B. Mar. 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.
14/659,337 03/16/2015 Pravin SAVANT 0081-333001/14-012-US 9041
93236 7590 03/02/2021
Brake Hughes Bellermann LLP
P.O. Box 1077
Middletown, MD 21769
EXAMINER
LYONS, ANDREW M
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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 PRAVIN SAVANT

Appeal 2019-005761
Application 14/659,337
Technology Center 2100

Before JEAN R. HOMERE, JEREMY J. CURCURI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–6, 8–11, 16, 18, and 20–27, all of the
claims pending.2 Appeal Br. 1. Claims 7, 12–15, 17, and 19 have been
canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to the Specification filed Mar. 16, 2015 (“Spec.”); the Final
Office Action, mailed Aug. 9, 2018 (“Final Act.”); the Appeal Brief, filed
Feb. 8, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed May 31, 2019
(“Ans.”); and the Reply Brief, filed July 25, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies BMC Software Inc. as the real party-in-interest. Appeal
Br. 1.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for allowing server (100) to determine the health statuses
of virtual machine (VM) templates (126) stored thereon. Spec. ¶ 3, Fig. 1.
Figure 1, reproduced and discussed below, is useful for
understanding the claimed subject matter:

Figure 1 above illustrates server (100) running scripts (128) against VMs
generated from VM templates (126) to generate for each VM an output
report indicating success or failure of the scripts. Id. ¶¶ 3–5.

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As depicted in Figure 1 above, upon receiving a change to a script
indicating a threat to security or regulatory requirement, processor (122)
executes instructions (130) to launch from VM template (126) an associated
VM, which concurrently runs a first script and a second script as background
jobs. Spec. ¶ 5. Upon determining that a job did not pass a script, processor
(122) modifies the VM and associated template based on received
modification input. Id. Subsequently, processor (122) decommissions the
VM in response to determining that the first and second jobs passed their
respective scripts. Id.
Claims 1, 6, and 20 are independent. Claim 1, reproduced below with
disputed limitations emphasized, is illustrative:
1. A non-transitory computer-readable storage medium
comprising instructions for determining health statuses of multiple
virtual machine templates stored thereon that, when executed by at
least one processor, are configured to cause a health status server to at
least:
in response to a change to a script to address at least one of a
security threat or a regulatory requirement created by a third party,
launch multiple virtual machines from the multiple virtual machine
templates;
run the changed script against the multiple virtual machines;
generate, for each of the multiple virtual machines, an output
report indicating success or failure for the virtual machine against the
changed script;
modify, based on the output report indicating failure for at least
one of the virtual machines, at least one of the multiple virtual
machine templates, the modification being performed during runtime
of the at least one virtual machine; and
decommission, based on a subsequent output report indicating
success for at least one of the virtual machines after the modification
performed during runtime, the at least one modified launched virtual
machine for which the template was modified.

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Appeal Br. 23 (Claims App.) (Emphasis added).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Bassi US 5,319,645 June 7, 1994
Wong US 2002/0104042 A1 Aug. 1, 2002
Prabhakaran US 6,859,758 B1 Feb. 22, 2005
Masek US 2005/0071447 A1 Mar. 31, 2005
Bishop US 2006/0015841 A1 Jan. 19, 2006
Vasile US 2007/0168734 A1 July 19, 2007
Fitzgerald US 2008/0134176 A1 June 5, 2008
Annangi US 7,415,635 B1 Aug. 19, 2008
StClair US 2008/0263505 A1 Oct. 23, 2008
Astete US 2009/0327471 A1 Dec. 31, 2009
Haley US 2010/0162047 A1 June 24, 2010
Chen US 2011/0083122 A1 Apr. 7, 2011
Wysopal US 2012/0072968 A1 Mar. 22, 2012
Antosz  US 2013/0232245 A1  Sept. 5, 2013 
Hudlow US 2013/0274006 A1 Oct. 17, 2013
Ravi US 2014/0026131 A1 Jan. 23, 2014
Greer US 2014/0082420 A1 Mar. 20, 2014
Gurumurthy US 2015/0052402 A1 Feb. 19, 2015
Schmidt US 2017/0208099 A1 July 20, 2017

3 All reference citations are to the first named inventor only.
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IV. REJECTIONS
The Examiner rejects claims 1–6, 8–11, 16, 18, and 20–27 as follows:
Claims 1, 5, and 26 are rejected as unpatentable under 35 U.S.C.
§ 103 over the combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy,
and StClair. Final Act. 3–10.
Claim 2 is rejected as unpatentable under 35 U.S.C. § 103 over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Astete. Id. at 10–11.
Claim 3 is rejected as unpatentable under 35 U.S.C. § 103 over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Bassi. Id. at 11–12.
Claim 4 is rejected as unpatentable under 35 U.S.C. § 103 over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Bishop. Id. at 12.
Claims 6, 18, and 27 are rejected as unpatentable under 35 U.S.C.
§ 103 over the combination of Fitzgerald, Chen, and Greer. Id. at 13–17.
Claim 8 is rejected as unpatentable under 35 U.S.C. § 103 over the
combination of Fitzgerald, Chen, Greer, Haley, and Wong. Id. at 17–19.
Claim 9 is rejected as unpatentable under 35 U.S.C. § 103 over the
combination of Fitzgerald, Chen, Greer, and Prabhakaran. Id. at 19–20.
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Chen, Greer, Wong, and Masek. Id. at 20–21.
Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Chen, Greer, Ravi, and Wysopal. Id. at 21–23.
Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Chen, Greer, and Annangi. Id. at 23–24.
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Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Bassi, Chen, Greer, and Schmidt. Id. at 24–29.
Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Antosz. Id. at 29–30.
Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Hudlow. Id. at 30–31.
Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Wong. Id. at 31–32.
Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Masek. Id. at 32–33.
Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Fitzgerald, Vasile, Chen, Ravi, Gurumurthy, StClair, and
Wysopal. Id. at 33–34.
V. ANALYSIS
Appellant argues, inter alia, that the combination of Fitzgerald,
Vasile, Chen, Ravi, Gurumurthy, and StClair does not teach or suggest,
“decommission, based on a subsequent output report indicating success for
at least one of the virtual machines after the modification performed during
runtime, the at least one modified launched virtual machine” as recited in
claim 1. Appeal Br. 13. In particular, Appellant argues that the Examiner
errs in finding that Fitzgerald’s alleged disclosure of stopping virtual
machines, “whether those checks passed or failed” teaches the cited
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limitations, and thereby fails to establish a prima facie case of obviousness.
Reply Br. 3.
In response, the Examiner submits the following:
Rather than implicitly acknowledging that Fitzgerald
lacks disclosure of the act of decommissioning a virtual
machine after successful validation of a post-change virtual
machine, Examiner specifically recites that the Fitzgerald
reference discloses that “other portions of the command
structure indicate that suspension [[i.e., stop running]],
committing changes, and StopVM [[i.e., turn off and/or stop
running]] are commands that can follow a policy validation
[[successful validation]] following an adaption (change)
[[modification]]” (Fin. Act. at 5). As discussed in the Summary
section, FIG. 4 of Fitzgerald and related disclosure provide for
a general process by which compliance checks can be
performed prior to or during runtime; failed compliance checks
can result in adaption; and subsequent to said compliance
checks, whether those checks passed or failed, virtual machines
are stopped and changes may be committed. Accordingly,
Examiner respectfully asserts that the cited portion of Fitzgerald
fully discloses “decommission, based on a subsequent output
report indicating success for at least one of the virtual machines
after the modification performed during runtime, the at least
one modified virtual machine.”

Ans. 44–45 (emphasis added).
Appellant’s arguments are persuasive of reversible Examiner error.
Fitzgerald discloses a method and system for applying compliance
policies against target VMs thereby enforcing the compliance policies
against the target VMs. Fitzgerald ¶ 9. According to Fitzgerald, upon
determining that a target VM is not compliant with a policy, the VM is
transferred to an execution platform wherein it is subject to various
operations (e.g., start, stop, pause, move, resume, clone, create new or
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deploy) and prevented from execution until it becomes compliant. Id.
Further, according to Fitzgerald, to bring the non-compliant VM into
compliance, remedial actions (e.g., issuing alerts regarding the VM’s status,
excluding certain policies from being executed by the VM, isolating the non-
compliant VM, and adjusting its security settings) can be heeded. Id.
Fitzgerald also discloses the VMs include automation scripts that are
updated as a new VM version is released. Id. ¶ 34. Fitzgerald further
discloses a VM change or evolution process wherein a VM can be readily
cloned, and created via templates, which allow the VMs to be used as a
model, as well as to automatically allow the VMs to evolve with changes,
new trends, and patterns. Id. ¶ 35. Furthermore, Fitzgerald discloses an adapt
VM module for adapting a non-compliant VM by making the necessary
changes thereto to bring the VM into compliance. Id. ¶¶ 58, 166–215, 227,
228, 288–291.
As a preliminary matter, we agree with the Examiner that in light of
the Specification, decommissioning the VM can be broadly and reasonably
construed as withdrawing the VM from service by either deleting the VM,
stopping it from running or turning it off. Ans. 44 (citing Spec. ¶¶ 28, 48).
As noted above, Fitzgerald discloses stopping a non-compliant VM during
processing to update its script to thereby render it compliant. However,
Fitzgerald is silent as to decommissioning the VM once it becomes
compliant. Thus, although Fitzgerald suggests decommissioning the VM,
such decommission is limited only to the process of bringing into
compliance a non-compliant VM. However, the Examiner has not
established on this record, nor are we able to ascertain any teaching in
Fitzgerald pertaining to decommissioning the VM, based on a subsequent
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output report indicating success for the VM, after rendering it compliant
during runtime.
Because Appellant shows at least one reversible error in the
Examiner’s obviousness rejection of independent claim 1, we do not reach
Appellant’s remaining arguments. Accordingly, we do not sustain the
Examiner’s obviousness rejection of independent claims 1, 6, and 20, each
of which includes the argued disputed limitations. Likewise, we do not
sustain the rejections of dependent claims 2–5, 8–11, 16, 18, and 21–27,
which also recite the disputed limitations.
VI. CONCLUSION
For the above reasons, we reverse the Examiner’s rejections of claims
1–6, 8–11, 16, 18, and 20–27.
VII. DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 26 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair
1, 5, 26
2 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
Astete
2
3 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
Bassi
3
4 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
4
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Bishop
6, 18, 27 103 Fitzgerald, Chen, Greer 6, 18, 27
8 103 Fitzgerald, Chen, Greer, Haley, Wong 8
9 103 Fitzgerald, Chen, Greer, Prabhakaran 9
10 103 Fitzgerald, Chen, Greer, Wong, Masek 10
11 103 Fitzgerald, Chen, Greer, Ravi, Wysopal 11
16 103 Fitzgerald, Chen, Greer, Annangi 16
20 103 Fitzgerald, Bassi, Chen, Greer, Schmidt 20
21 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
Antosz
21
22 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
Hudlow
22
23 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
Wong
23
24 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
Masek
24
25 103
Fitzgerald, Vasile,
Chen, Ravi,
Gurumurthy, StClair,
Wysopal
25
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–6, 8–11,
16, 18, 20–27

REVERSED