Ex Parte BlumDownload PDFPatent Trial and Appeal BoardMar 14, 201713213265 (P.T.A.B. Mar. 14, 2017) Copy Citation 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 2 Appeal 2016-002857 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.) 3 Appeal 2016-002857 Application 13/213,265 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— 4 Appeal 2016-002857 Application 13/213,265 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). 5 Appeal 2016-002857 Application 13/213,265 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 6 Appeal 2016-002857 Application 13/213,265 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 7 Appeal 2016-002857 Application 13/213,265 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 8 Appeal 2016-002857 Application 13/213,265 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. 9 Appeal 2016-002857 Application 13/213,265 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 10 Copy with citationCopy as parenthetical citation