Ex Parte Bostrom et al

Patent Trial and Appeal Board

Dec 19, 2013

11743137 (P.T.A.B. Dec. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIK BOSTROM and CHRISTIE MELNYCHUK
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Appeal 2011-007319
Application 11/743,137
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007319
Application 11/743,137
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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-27. (Ans. 2; Final Rej. dated
Jun. 28, 2010, page 1). No claims were canceled or withdrawn. (App.
Br. 3). Therefore, claims 1-27 are subject to this appeal.1 Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to pre-configured partitions with use-rights
limitations. (Spec. 1). Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A computer system comprising:
[a] an inactive partition including at least one processor and
storage media encoded with a bootable operating system; and
[b] a use rights manager for obtaining a license to run said
partition;
and
[c] a workload manager for activating said partition once said
license is obtained.
(Elements lettered).

1 Notice of Appeal dated Aug. 14, 2010 (“Applicant hereby appeals to the
Board of Patent Appeals and Interferences from the decision of the examiner
date, 2010-Jun-28 rejecting the following claims 1-27”). See also Manual of
Patent Examining Procedure (MPEP) § 1215.03 (Rev. 9, August 2010)
(withdrawn claims are canceled and “the appeal continues as to the
remaining claims”).
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REJECTIONS
R1. Claims 15-17 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by US 2006/0031448 A1 (Feb. 9, 2006) (“Chu”). (Ans. 3).
R2. Claims 1-14, 18, 19, 21, and 26 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over US 2005/0102674 A1 (May 12, 2005)
(“Tameshige”) and Chu. (Ans. 5).
R3. Claims 22, 23, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tameshige, Chu, and US 2005/0044228 A1 (Feb.
24, 2005) (“Birkestrand”). (Ans. 12).
R4. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tameshige, Chu, and US 2002/0095672 A1 (Jul.
18, 2002) (“Evans”). (Ans. 14).
R5. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chu and US 2004/0148498 A1 (Jul. 29, 2004)
(“Circenis”). (Ans. 11).

GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the
obviousness rejection R2 of claims 1-14, 18, 19, 21, and 26 on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 2

2 Appellants filed a Notice of Appeal on Aug. 14, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.
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Based on Appellants’ arguments, we decide the appeal of the
obviousness rejection R3 of claims 22, 23, and 27 on the basis of
representative claim 22. See Id.
We address the rejections R1, R4, and R5 separately, infra.
ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
rejections of the claims. 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 Answer in response to
arguments made in Appellants’ Appeal Brief. (Ans. 16-19). We highlight
and address specific findings and arguments below:
R1 AND R5
Appellants do not present any argument contesting the Examiner’s
rejections R1 of claims 15-17 and R5 of claim 20. (Ans. 3-4, 11).
Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004). Accordingly, we sustain the Examiner’s rejections
R1 and R5.
R2.
Issue: Under § 103, did the Examiner err in combining the cited
references relied upon in the rejection of claim 1?
Regarding the combination of Tameshige and Chu in the rejection of
claim 1, Appellants contend the Examiner has failed to consider teachings as
a whole, leading the Examiner to pick and choose elements from Tameshige
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and Chu without regard to conflicts which the proposed combination gives
rise. (App. Br. 14). Appellants contend:
The Examiner has erred in failing to consider the
teachings in the cited references as a ·whole. This failure
allowed the Examiner to improperly mix and match elements
from Tameshige and Chu without regard to the conflicts
involved. Thus, the Examiner takes from Tameshige’s hot
standby state the fact that an application is installed, while
ignoring Tameshige’s disclosure that the system in the hot
standby state must be enabled to permit dynamic state
switching including instantaneous switching to an active state.
Likewise, the Examiner takes from Chu the business model
applied to blades that are delivered in a disabled state, while
ignoring Chu’s disclosure that several steps (e.g., booting) are
required before an application can run on a formerly disabled
blade. As result of these errors, the Examiner has proposed a
modification of Tameshige that fails to meet Tameshige’s
requirements of dynamic state switching and instantaneous
switching to an active state.
(App. Br. 14).
Appellants’ contentions are not persuasive. Appellants attack the
references individually, and fail to adequately address the Examiner’s
specific combination of Tameshige and Chu and specific findings. (Ans. 5-
6, 16-17). Appellants’ contention that Chu’s blade services with disabled
reset mode, when implemented as the “inactive partition” in the combination
of Tameshige and Chu, goes against Tameshige’s teachings, is not
persuasive because the Examiner’s combination for the “inactive partition”
does not include Chu’s blade servers, but instead relies on Tameshige’s
standby system. (Id.).
We are of the view that the combination of Tameshige’s standby
systems with Chu’s remote manager and workload manager would have
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been an arrangement of familiar elements with each performing the same
function it had been known to perform, that would have yielded a
predictable result. See KSR Int’l Co. v. Teleflex Inc. 550 U.S. 398, 417
(2007) (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). For
these reasons, on this record, we are not persuaded the Examiner erred.
Accordingly, we sustain the rejection R2 of claim 1 and of claims 2-14, 18,
19, 21, and 26, which fall therewith.
R3.
Regarding the obviousness rejection of claim 22, Appellants contend,
“Chu’s teachings are restricted to blade systems. Therefore, Tameshige as
modified by Chu is a blade system.” (App. Br. 15).
Appellants’ contention is not persuasive. Appellants’ contention is a
mere conclusory statement. Appellants provide no specific factual evidence
in support thereof. “Attorney’s argument . . . cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover,
the Examiner finds, and we agree:
Although Chu does teach an on-demand server blade
system, Chu is relied upon only to disclose the teaching of a use
rights manger in order to obtain a license for activating the
disabled blades, as discussed supra. The primary reference,
Tameshige, however discloses a computer resource distribution
system including active and standby systems that is to be
modified by Chu such that a license is now required in order to
activate the standby system. Therefore, Tameshige as modified
by Chu is not restricted to blade systems.
(Ans. 17).
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For these reasons, on this record, we are not persuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection R3 of claim 22, and
of claims 23 and 27, which fall therewith.
R4.
Appellants contend claims 24 and 25 are patentable for essentially the
same reasons previously advanced regarding claim 1. (App. Br. 17).
However, we found these arguments unpersuasive, as discussed above
regarding claim 1. Accordingly, we sustain the Examiner’s rejection R4 of
claims 24 and 25.
DECISION
We affirm the Examiner’s rejection R1 of claims 15-17 under § 102.
We affirm the Examiner’s rejections R2-R5 of claims 1-14 and 18-27
under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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