Ex Parte Fultheim et alDownload PDFPatent Trial and Appeal BoardDec 18, 201410828465 (P.T.A.B. Dec. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHAI FULTHEIM, HERB ZLOTOGORSKI, and YANIV ROMEM ____________ Appeal 2012-000817 Application 10/828,465 Technology Center 2100 ____________ Before MAHSHID D. SAADAT, THU A. DANG, and LINZY T. McCARTNEY, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–45, which constitute all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is ScaleMP, Inc. (App. Br. 1). 2 An oral hearing scheduled for September 18, 2014, was waived. Appeal 2012-000817 Application 10/828,465 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to a method and system for executing a software application in a plurality of computing nodes operative to execute a virtual machine (see Spec. ¶¶ 26–27). Claim 1 is illustrative and reads as follows: 1. A method for executing a software application in a plurality of computers having respective hardware resources said hardware resources comprising a respective memory and a respective I/O device, wherein said computers include a first computer and a second computer that intercommunicate over a network, comprising the steps of: running at least a first virtual machine implementer and a second virtual machine implementer on said first computer and said second computer, using said respective memory, wherein said first and second virtual machine implementers run separately and independently of one another on said first and second computers, respectively; and executing a virtual machine on said computers, wherein said virtual machine is shared between said first virtual machine implementer and said second virtual machine implementer using said respective I/O device in each of said first computer and said second computer to intercommunicate between said first computer and said second computer, and a guest operating system runs over said shared virtual machine. Rejections The Examiner rejected claims 1–4, 9–16, 22–30, and 32–45 under 35 U.S.C. § 103(a) as being unpatentable over Okamoto (US 5,829,041; Oct. 27, 1998) and VMware (VMware Workstation, User’s Manual, Version 3.2, 2002, pp. 1–420) and further added Altman (US 2004/0054517 A1; Mar. 18, 2004) to reject claims 5–8, 17–21, and 31. Appeal 2012-000817 Application 10/828,465 3 ANALYSIS The Examiner found Okamoto discloses all the recited steps of claim 1 except for the step of “executing a virtual machine . . . wherein said virtual machine is shared between said first virtual machine implementer and said second virtual machine implementer,” for which the Examiner relied on VMware (Ans. 3–4). The Examiner cited page 21 of VMware for disclosing “executing a program which creates a virtual machine and contains a guest operating system” (Ans. 4). The Examiner concluded that modifying Okamoto with VMware would have been obvious to one of ordinary skill in the art in order to achieve different advantages of virtual computing that “creates ‘easier’ management when many computers execute one program” (id. (citing Okamoto col. 5, ll. 36–42)). Appellants contend, although one of the network computers in Okamoto acts as a “chapter server” and manages the virtual space among the computers, “[e]ach computer, however, manages its part of the virtual space independently” (App. Br. 10 (citing Okamoto, abstract)). Appellants rely on the Tel-Zur Declaration, filed under 37 C.F.R. § 1.132, and assert that modifying Okamoto with the virtual machine discussed in the VMware reference would have resulted only in installing the VMware workstation on each computer shown in Figure 2 of Okamoto without any suggestion for sharing the virtual machine among multiple computers (App. Br. 11–12). 3 The Examiner further finds replacing the user program 2 in the “NETWORK SINGLE VIRTUAL SPACE,” as shown in Figure 2 of Okamoto, with the virtual machine of VMware results in multiple computers 3 We do not address Appellants’ arguments regarding the other Declarations, filed under 37 C.F.R. § 1.132, to overcome the prior art rejection because the contentions discussed here are dispositive. Appeal 2012-000817 Application 10/828,465 4 running a Host Operating System (OS) function as a virtual machine implementer (Ans. 14–15). In fact, the Examiner equates the virtual space management apparatus (or the chapter server) of the Network Single Virtual Space with a virtual machine implementer that creates a virtual machine and runs multiple applications (Ans. 15). However, we agree with Appellants’ contention (Reply Br. 5) that the Examiner has not explained how replacing a user program on one of the computers of Okamoto with a virtual machine suggests sharing the virtual machine between the computers. As further pointed out by Appellants (App. Br. 12), although the virtual machine of VMware operates on a computer over the host operating system, no teaching has been identified to show the virtual machine is shared among a number of computers. In other words, the Examiner has not explained how managing the virtual space by defining memory chapters or sections on each computer relates to a virtual machine that is shared among those computers (see Okamoto, col. 5, ll. 16–35 and col. 6, ll. 17–31). Therefore, Appellants’ arguments have persuaded us of error in the Examiner’s position with respect to the rejection of independent claim 1, independent claims 14 and 28, which recite similar limitations, and claims 2–13, 15–27, and 29–45 dependent thereon. DECISION The Examiner’s decision to reject claims 1–45 is reversed. REVERSED Appeal 2012-000817 Application 10/828,465 5 lv Copy with citationCopy as parenthetical citation