Ex Parte Hodge et al

Board of Patent Appeals and Interferences

Sep 4, 2008

10147831 (B.P.A.I. Sep. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LESLIE K. HODGE and SCOTT E. LEDBETTER
____________________

Appeal 2008-0802
Application 10/147,8311
Technology Center 2100
____________________

Decided: September 4, 2008
____________________

Before ALLEN R. MACDONALD, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 3, 5 to 12, and
14 to 23 under authority of 35 U.S.C. § 134. The Board of Patent Appeals

1 Application filed May 17, 2002. The real parties in interest are Storage
Technology Corporation, and its parent company, Sun Microsystems, Inc.

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and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 4
and 13 are cancelled.
Appellants’ invention relates to a method, system and computer
program for creating virtual servers in an automatic manner. In the words of
the Appellants:
The present invention provides a software-based solution for
deploying virtual servers in a computer network. The method is
initiated when an end user requesting a new virtual server clicks a
hyperlink in which an imbedded command sequence requests the
software to deploy a new virtual server. The software automatically
updates the hypervisor environment to include the new virtual server,
prepares the new virtual server disk allocations, propagates a server
model image into the new virtual server, updates the new image with
local identification parameters, and then boots the new virtual server.

(Spec., 3).

Claims 1, 2, and 18 are exemplary:
1. A method for deploying a virtual server, the method comprising the
computer-implemented steps of:

receiving a request for deployment of the virtual server, automatically
allocating storage media for the virtual server; automatically copying a
predefined model system image into the virtual server;

automatically updating the image of the virtual server with local
identification parameters; and automatically booting the virtual server.

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2. A method for deploying a virtual server, the method comprising the
computer-implemented steps of:

receiving a request for deployment or the virtual server, wherein the
request for deploying the virtual server further comprises definition criteria
including:

(i) a pool of possible TCP/IP addresses for the virtual server;

(ii) a pool of possible names for the virtual server; and

(iii) the model system image that is used for the creation and
deployment of the virtual server; and

automatically allocating storage media for the virtual server,

automatically copying a predefined model system image into the
virtual server;
and

automatically booting the virtual server.

18. A system for deploying a virtual server, the system comprising:

a means for receiving a request for deployment of the virtual server;

a means for automatically allocating storage media for the virtual
server;

a means for automatically copying a predefined model system image
into the virtual server, wherein the model system image contains a
deployment script that is executed In the virtual server to facilitate
establishment of a unique identity of the virtual server; and a means for
automatically booting the virtual server.
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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wesinger US 5,870,550 Feb. 9, 1999
Tremain US 2002/0069369 A1 Jun. 6, 2002
(filed Jul. 3, 2001)
Hay US 2002/0120660 A1 Aug. 29, 2002
(filed Feb. 28, 2001)
Bruck US 6,801,949 B1 Oct. 5, 2004
(filed May 8, 2000)

REJECTIONS
R1: Claims 1, 3, 6 to 10, 12, 15 to 17, and 20 stand rejected under
35 U.S.C. § 103(a) for being obvious over Tremain in view of Hay.
R2: Claims 2 and 11 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Tremain in view of Hay and further in view of Bruck.
R3: Claims 5, 14, 18, 19, and 21 to 23 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over Tremain in view of Hay and further in view
of Wesinger.

Groups of Claims:
Claims are grouped by rejection, with claims 1, 2, and 18 being
representative of their respective groups.
Appellants contend that the claimed subject matter is not rendered
obvious by Tremain and Hay, and the respective secondary references, for
failure of those references to teach important claimed limitations. The
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Examiner concludes that each of the three groups of claims is properly
rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
We affirm the rejections.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the references teach the limitations of the claims, especially the automatic
copying of a predefined model system image into a virtual server.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

1. Appellants have invented a method, system and computer program
device (method) for quickly deploying virtual servers in a computer
network. (Abstract). Instead of manually defining and initiating
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individual tasks that may take up to 6 hours to deploy and customize a
virtual server, (Spec., 8, bottom), the Appellants’ method produces a new
virtual server in less than 5 minutes. (Spec., 11). A key element in the
method is the copying of an appropriate model image into the space
reserved for the virtual server, except for dynamic network and server
definitions that identify each server as unique. (Spec., 9, bottom). Those
customizations are derived from a stream of definitions applied to the
request for the new virtual server. (Spec., 10, bottom). Once the Model
Linux Image (Virtual Server image) is defined, it is installed in the
physical server system (Spec., 10, bottom) and booted up (Spec., 11,
bottom).
2. The reference Tremain teaches a device and method for generating a
virtual server in a computing environment for each user on the network
who requests one. (¶[0043]). Thus, in contrast to the prior manual
methods, once the Specification for each user is defined, instead of taking
weeks to establish the virtual server, it may be brought into being within
a matter of minutes or less. (¶[0149]). An aspect of Tremain’s method is
the copying of preconfigured standard servers which have been pre-
loaded with the most popular software configurations. (¶[0145]). These
images are customized with the application and server software requested
by the individual user. (¶[0174]). The reference teaches depositing the
virtual machine files into reserved container files in the physical storage
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systems (¶[0102]), configuring them (¶[0174]) and then booting them up
to run. (¶[0188]).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1732 (2007).
Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293,
1300 (Fed. Cir. 2007); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307,
1319-20 [84 USPQ2d 1146] (Fed. Cir. 2007) (law of the case that a
dependent claim was obvious means the parent claim must also have been
obvious); In re Muchmore, 433 F.2d 824, 825 (CCPA 1970) ("Since we
agree with the board's conclusion of obviousness as to these narrow claims,
the broader claims must likewise be obvious.").
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In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),
the Board may rely on one reference alone without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re
Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966).
Our guiding court has held “[t]he prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the ‘198 application.” (In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellants’
claims under 35 U.S.C. § 103. The prima facie case is presented on pages 4
to 12 of the Examiner’s Answer. In opposition, Appellants present a number
of arguments.

Arguments with respect to the rejection
of claims
1, 3, 6 to 10, 12, 15 to 17, and 20
under 35 U.S.C. § 103(a) [R1]

Appellants contend that the Examiner erred in rejecting claims 1, 3, 6
to 10, 12, 15 to 17, and 20 under 35 U.S.C. § 103(a). Appellants first
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contend that Tremain and Hay fail to teach automatically copying a
predefined model system image into a virtual server after storage media has
been allocated to support the virtual server, as recited in claims 1 and 10.
(App. Br., 7, middle). Appellants quote ¶[0145] of Tremain at the bottom of
their Appeal Brief, page 7, which clearly expresses a copying step, but
explain that Tremain only relates to copying an operating system, not
running applications and other memory contents. (App. Br., 8, top).
Reviewing Tremain, we disagree with Appellants. Tremain discloses
that: “Pre-configured virtual servers 83 …include virtual machine operating
systems 84 and application and/or server software 85 for the different
customers A,B,C,D,E.” (Tremain, ¶[0174]). We thus find that Tremain
discloses a full image including the Operating System, Applications and data
provided to the virtual servers created for each user.
Appellants next contend that the cited references fail to teach
automatically updating the image of the virtual server with local
identification parameters. (App. Br., 8, middle). We do not find error with
the rejection on this point, for the reasons stated by the Examiner, in the
Answer, page 18, bottom. Tremain and Hay teach fully customizing the
copied image.

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Arguments with respect to the rejection
of claims 2 and 11
under 35 U.S.C. § 103(a) [R2]

Appellants argue that the references do not teach the claimed 3 items
enumerated in claim 2: the pool of addresses, the pool of names, and the
model system image. The Examiner has pointed out the precise points in the
prior art references where each of these elements is taught. (Answer, 19,
bottom). We find that the process in Tremain is initiated by a request of the
users, A…E, which requests contain the Specifications of the customer.
(Tremain, ¶[00 43]).
In an interesting counter to the rejection, the Appellants contend that
because multiple references are used to present the teachings of the 3 items,
there is no single teaching that contains all of the enumerated items in one
request. (App. Br., 12, middle). Appellants are reminded of the holdings in
KSR Int’l Co. v. Teleflex, Inc (cited above) which instructs us that “a person
of ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” The fact that the prior art is taught in
multiple patents does not obviate the effectiveness of the teachings to render
the claims obvious.

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Arguments with respect to the rejection
of claims 5, 14, 18, 19, and 20 to 23
under 35 U.S.C. § 103(a) [R3]

Claim 20 was rejected under R1 as being obvious over Tremain and
Hay, but as it is dependent on claim 18, which requires the teachings of
Wesinger for the rejection, it will be considered here under R3.
Appellants first object to this rejection for failure to teach the
automatic copying of a predefined model system into a virtual server as
claimed. This argument has been presented and rebutted above, and has not
been found convincing. (See the discussion of R1 above).
Appellants next argue that the reference Wesinger, in combination
with Tremain and Hay, fail to teach the use of scripts for customizing the
image of a server, and, even if they do teach scripts, Wesinger teaches away
from the use of scripts. We find that the Examiner has carefully explained
the application of the prior art Tremain, Hay, and Wesinger to the rejection
on pages 21 and 22 of the Examiner’s Answer, and we find no error in that
rejection on the points raised.
Concerning the Appellants’ arguments that Wesinger teaches away
from the use of scripts and therefore cannot be a valid reference, we consider
the guidance of In re Fulton (cited above). Wesinger teaches an
improvement over the use of Common Gateway Interface (CGI) scripts,
which are slow to be executed because they are commonly interpreted and
not compiled. However, that does not obviate the fact that (CGI) scripts are
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in the prior art. As teachings which do not “criticize, discredit, or otherwise
discourage” the solution remain in the prior art, Wesinger remains a valid
reference, as it merely improves on the teachings of (CGI) scripts. (In re
Fulton, cited above.).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 3, 5 to 12, and 14 to 23.

DECISION
The Examiner's rejection of claims 1, 3, 6 to 10, 12, and 15 to 17
under 35 U.S.C. § 103(a) for being obvious over Tremain in view of Hay is
affirmed.
The Examiner’s rejection of claims 2 and 11 under 35 U.S.C. § 103(a)
for being obvious over Tremain in view of Hay and further in view of Bruck
is affirmed.
The Examiner’s rejection of claims 5, 14, 18, 19, and 20 to 23 under
35 U.S.C. § 103(a) for being obvious over Tremain in view of Hay and
further in view of Wesinger is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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