Ex Parte Gilbert et al

Patent Trial and Appeal Board

Sep 2, 2016

13347374 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/347,374 01/10/2012
124677 7590 09/07/2016
Russell Ng PLLC (IBM AUS)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
David Gilbert
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GB920100044US1 2043
EXAMINER
GRAFF ARI, ABU Z
ART UNIT PAPER NUMBER
2195
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GILBERT, DAVID HAIKNEY, and
DAVID MACHINTOSH 1
Appeal2015-003962
Application 13/34 7 ,3 7 4
Technology Center 2100
Before DEBRA K. STEPHENS, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, 7-11, and 21-35, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Technology
The application relates to managing the migration of a virtual machine
from one physical computer system to another. Spec. i-fi-1 1, 2, 5. Claim 1 is
exemplary and reproduced below with the key limitations emphasized:
1. A data processing system for controlling migration of a first
virtual machine (VM), comprising:
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal2015-003962
Application 13/347,374
a processor;
a data storage coupled to the processor; and
program code within the data storage and executable by
the processor to control migration of the first VM at a first site to
a second site, wherein the program code includes:
an identify component that identifies the second site;
a request component that sends a consent request message
to a plurality of software components including a second VM
running at the second site, 2 wherein the consent request message
includes at least one of a set including an identifier of the first
VM and an identifier of the second site; and
a migrate component that, responsive to receiving consent
messages indicating consent of the plurality of software
components including the second VM to the migration, initiates
migration of the first VMfrom the first site to the second site.
Rejections
Claims 21-30 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 3.
Claims 1-5, 7-11, and 21-35 stand rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Shen et al. (US 2011/0099548 Al; Apr.
28, 2011) and Pillutla (US 2011/0202640 Al; Aug. 18, 2011). Final Act. 5. 3
ISSUES
1. Did the Examiner err in finding "a computer-readable storage
device" includes ineligible subject matter under 35 U.S.C. § 101?
2. Did the Examiner err in finding Shen teaches or suggests "a
request component that sends a consent request message to ... a second VM
2 While not affecting the outcome of this appeal, it may be helpful to add
commas or other separators to clarify whether "running at the second site"
modifies "a second VM" or instead "a plurality of software components".
3 An indefiniteness rejection of claims 1-5, 7-11, and 21-35 was withdrawn.
Ans. 3--4; Final Act. 4. Objections to the specification and claims 33 and 35
also are not on appeal. Final Act. 2-3.
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Appeal2015-003962
Application 13/347,374
running at the second site" and "a migrate component that, responsive to
receiving consent messages indicating consent of ... the second VM to the
migration, initiates migration of the first VM from the first site to the second
site," as recited in claims 1 and 21?
ANALYSIS
§ 101: Claims 21-30
The Examiner rejects independent claim 21 because the Examiner
finds the term "a computer-readable storage device" includes non-statutory
subject matter such as transitory signals. Final Act. 3. The Examiner says,
"Applicant is advised to include a hardware or 'non-transitory' program
product to overcome the 35 U.S.C. 101 rejections." Id.
Appellants contend "a computer-readable storage device" is limited to
hardware or equipment and therefore excludes transitory signals. App. Br.
4--5; Reply Br. 2-3. Appellants point to two extrinsic definitions from 2014
as support that a storage device must be "hardware" or "equipment" rather
than a transitory signal, although the present application claims priority to a
foreign application filed three years earlier in January 2011. App. Br. 4--5.
We have held in the past that "those of ordinary skill in the art would
understand the claim term 'machine-readable storage medium' would
include signals per se." Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013). Moreover, "[t]he term 'machine-readable medium' is
equivalent to the more commonly used term 'computer-readable medium."'
Id. at 1859 n.2. Here, the Specification of the present application equates
"medium" and "device" and refers to them as a "computer readable storage
medium/device," providing the same examples for both. Spec. i-f 100.
Therefore, Mewherter applies to the claim term at issue in this case.
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Appeal2015-003962
Application 13/347,374
We also agree with the Examiner that the Specification does not
expressly and unambiguously limit the storage device to solely non-
transitory forms via a definition or disclaimer, and instead repeatedly says
the storage device should not be limited to the examples provided. Id. ("The
computer readable storage medium/device may be, for example, but not
limited to, .... More specific examples (a non-exhaustive list) .... ")
(emphasis added). Appellants' argument based on extrinsic definitions is
similar to those rejected in Mewherter so we must apply that precedent.
"[W]here, as here, the broadest reasonable interpretations of ... the claims
... covers a signal per se, the claims must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter." Mewherter, 107 USPQ2d at
1862; In re Nuijten, 500 F.3d 1346, 1352 (Fed. Cir. 2007).
Accordingly, we sustain the Examiner's rejection of claim 21, and
claims 22-30, which Appellants argue are patentable for similar reasons.
See App. Br. 4; 37 C.F.R. § 41.37(c)(l)(iv).
§ 103: Claims 1-5, 7-11, and 21-35
Both independent claims (1 and 21) recite "a request component that
sends a consent request message to ... a second VM running at the second
site" and "a migrate component that, responsive to receiving consent
messages indicating consent of ... the second VM to the migration, initiates
migration of the first VM from the first site to the second site."
Appellants concede Shen discloses seeking and receiving consent
from "the virtual machine to be migrated, the source platform on which the
virtual machine is running, and the target platform to which the virtual
machine is to be migrated," but contend the Examiner has not shown Shen
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Application 13/347,374
teaches consent from "a second virtual machine (VM) running at a second
site (e.g., a VM running at the target platform)." Reply Br. 4; App. Br. 10.
The Examiner finds Shen's evaluation process "implies receiving
consent from the target platform including both VMM and/or VM." (Ans.
7.) However, we agree with Appellants that "this assertion (for which the
Examiner provides no further explanation or supporting reasoning) is wholly
unsupported by the cited passage of Shen." Reply Br. 6. We agree with the
Examiner that Shen teaches the target platform performs checks on usages of
the target platform's virtual machines. Ans. 7; Shen i-f 85. The Examiner
states the consent could come from the target platform's "VMM and/or VM"
(Ans. 7 (emphasis added)), yet fails to provide any reason why such consent
would come from a target platform's virtual machine (VM) rather than (or in
addition to) its virtual machine monitor (VMM).
Given this record, we are constrained to reverse the Examiner's
obviousness rejection of claims 1 and 21. Dependent claims 2-5, 7-11, and
22-3 5 stand with their respective independent claims.
Because we agree with one of the obviousness arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 21-30 under§ 101, but reverse the Examiner's decision rejecting
claims 1-5, 7-11, and 21-35 under§ 103.
No time period for taking subsequent action in connection with this
appeal maybe extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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