Ex Parte LI et al

Patent Trial and Appeal Board

Oct 16, 2014

12571271 (P.T.A.B. Oct. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LI ERRAN LI and THOMAS WOO
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Appeal 2012-0032121
Application 12/571,2712
Technology Center 2400
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Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, and Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4, 6, 7, 11–16, and 19–28. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
August 25, 2011) and Reply Brief (“Reply Br.,” filed December 13, 2011),
the Examiner’s Answer (“Ans.,” mailed October 21, 2011), and the Final
Office Action (“Final Act.,” mailed May 25, 2011).
2 The real party in interest, identified by Appellants, is Alcatel Lucent.
App. Br. 1.
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CLAIMED INVENTION
Appellants’ claimed invention relates “generally to network
communications and Internet architecture” (Spec. ¶ 1).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system for managing resources in a cloud
network allocated to a private enterprise network, the system
comprising:
a first series of tangible servers comprising virtual
machines in the cloud network allocated to the private
enterprise network;
a second series of tangible servers comprising computing
resources in the private enterprise network;
a load balancer in the private enterprise network for
distributing work requests among members in the first and
second series of tangible servers based on a user-specified
allocation rule, the load balancer including a server list
comprising a plurality of entries corresponding to virtual
machines in the first series of tangible servers and computing
resources in the second series of tangible servers allocated to
the private enterprise network; and
a controller in the private enterprise network comprising:
a performance monitor for collecting performance
data of the first and second series of servers, and
an instance manager for:
adding or removing virtual machines in the
first series of tangible servers based on the
performance data, and
adding or removing servers from the server
list.

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REJECTIONS3
Claims 1–4, 6, 7, 20, and 21 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.4
Claims 1–4, 6, 11, 14, 23, and 24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lahiri (US 2010/0318609 A1, pub. Dec. 16,
2010) and Wei (US 2010/0220622 A1, pub. Sept. 2, 2010).
Claims 7, 12, 13, 20–22, and 25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Lahiri, Wei, and van der Linden
(US 2011/0022812 A1, pub. Jan. 27, 2011).
Claims 15, 16, 19, and 26–28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lahiri, Wei, and Smith (US 5,878,224, iss. Mar. 2, 1999).

ANALYSIS
Non-Statutory Subject Matter
The Examiner takes the position that independent claim 1 is properly
rejected under 35 U.S.C. § 101 because the claim is directed to
software per se, and, therefore, to patent-ineligible subject matter (Ans. 4–7
and 22–24). We disagree.
Claim 1 is directed to a system for managing resources in a cloud
network allocated to a private enterprise network, and recites that the system
comprises, inter alia, “a second series of tangible servers comprising
computing resources in the private enterprise.” We agree with Appellants
that a person of ordinary skill in the art, on reviewing the Specification,

3 The Examiner has withdrawn the rejection of claims 14–16, 19–22, and
26–28 under 35 U.S.C. § 112.
4 We treat, as inadvertent error, the Examiner’s inclusion of canceled
claim 5 among the claims rejected under 35 U.S.C. § 101.
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would understand that the term “computing resources” encompasses
hardware components (App. Br. 9). The Specification expressly describes
that “computing resources may represent, for example, processing capacity,
bandwidth, and storage capacity” (Spec. ¶ 25), i.e., hardware components,
such as processors, RAM and/or other storage devices, etc.
Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 101. For the same reasons, we also do not sustain the
rejection of claims 2–4, 6, 7, 20, and 21, each of which ultimately depends
from claim 1.
Obviousness
Independent claim 14 and dependent claims 15, 16, 19, and 26–28
We are persuaded by Appellants’ argument that claim 14 recites
subject matter, e.g., “checking . . . the second series of tangible servers in
the cloud network for a choke point by determining, for each new server,
whether an addition of the new server does not increase the performance
metric value,” that is not recited in claim 1, and that the Examiner erred in
summarily rejecting claim 14 in the Final Office Action without specifically
setting forth where this subject matter is disclosed and/or suggested in the
cited references (App. Br. 12 and Reply Br. 7).5
The Examiner takes the position that the subject matter of claim 1 is
equivalently claimed in claim 14, and more particularly that a “‘choke
point,’ [as recited in claim 14] is a performance metric value” (Ans. 25).
The Examiner, thus, maintains that “a controller . . . comprising a
performance monitor for collecting performance data,” as recited in claim 1,

5 The Final Office Action states: “As to claim 14, see similar rejection to
claim 1 where the method is taught by the system” (see Final Act. 32).
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is equivalent to “checking, by the controller, the second series of tangible
servers in the cloud network for a choke point,” as recited in claim 14
(Ans. 25).
We agree with Appellants that a person of skill in the art would not
understand the term “choke point” to be a synonym for “performance metric
value.” (Reply Br. 6–7). The Specification describes that “[a] choke point
may be a server experiencing a bottleneck or a component or grouping of
components limiting the performance (e.g., application processing) or
capacity of the entire network” (Spec. ¶ 48). And, although we agree with
the Examiner that checking for a choke point may include taking
measurements of performance metric values (see Ans. 25), that does not
make the two terms equivalent.
Claim 14 also uses both the term “choke point” and the term
“performance metric value,” i.e., “checking, by the controller, the second
series of tangible servers in the cloud network for a choke point by
determining, for each new server, whether an addition of the new server
does not increase the performance metric value” (emphasis added) — which
further evidences that a choke point is not the same as a “performance metric
value.”
We also fail see why, and the Examiner does not explain why,
“adding or removing virtual machines in the first series of tangible servers
based on the performance data and adding or removing servers from the
server list” in claim 1 is equivalent to “determining for each new server,
whether an addition of the new server does not increase the performance
metric,” as recited in claim 14 (see Ans. 25).
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We find that the Examiner has failed to establish a prima facie case of
obviousness with respect to claim 14. Therefore, we do not sustain the
rejection of claim 14 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of claims 15, 16, 19, and 26–28,
which depend from claim 14.
Independent claim 1 and dependent claims 2–4, 6, 7, 20, and 21
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Lahiri, on which
the Examiner relies, fails to disclose or suggest “distributing work requests
among members in the first and second series of tangible servers based on a
user-specified allocation rule,” as recited in claim 1. Instead, we agree with
the Examiner that Lahiri teaches this feature at paragraphs 32 through 37
and 55 through 59 (see Ans. 9 and 29–30).
In this regard, we note that Lahiri discloses a system and method for
providing a seamless connection between an enterprise network and a cloud
so that components, e.g., applications, virtual machine instantiations, etc.,
can be easily migrated between the enterprise network and the cloud
(see, e.g., Lahiri, Abstract). Lahiri describes at paragraph 56 that the
decision to execute a component in the cloud, i.e., to distribute work
requests among members in the first and second series of tangible servers, is
made by an enterprise agent, e.g., an individual administrator or an
automated agent, and that the decision may be based on “some pre-defined
set of heuristics,” i.e., “a user-specified allocation rule.” As such, Lahiri
meets the claim language.
Appellants argue that the pre-defined heuristics of Lahiri are not the
same as the claimed user-specified allocation rule because “the predefined
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heuristic appears to be used merely in deciding to make the initial request [to
execute a task in the cloud] and not to determine to which server in the cloud
the request should be directed for processing” (App. Br. 13). However, that
argument is not persuasive at least because it is not commensurate with the
scope of claim 1 (see Ans. 29–30).
Claim 1 recites “distributing work requests among members in the
first and second series of tangible servers [i.e., between cloud servers and
servers in the private enterprise network] based on a user-specified
allocation rule.” Claim 1 does not require determining the particular server
in the cloud to which the work request will be directed.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejections
of dependent claims 2–4, 6, 7, 20, and 21, which are not separately argued
except based on their dependence on claim 1 (App. Br. 13–14).
Independent claim 11 and dependent claims 12, 13, and 22–25
Claim 11 is substantially similar to claim 1 except that claim 11
recites “choosing [from the active virtual machines in the first series of
servers and computing resources in the second series of servers], by the load
balancing module, a destination server through the execution of the user-
specified allocation rule based on the performance data,” i.e., selecting,
based on the user-specified allocation rule, the particular destination server,
in either the cloud or the private enterprise network, to which a work request
will be directed.
As described above, Lahiri discloses a system and method for
providing a seamless connection between an enterprise network and a cloud,
and describes that the decision to execute a component in the cloud, rather
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than in the enterprise network, may be based on “some pre-defined set of
heuristics” (Lahiri ¶ 56). Lahiri does not explicitly describe choosing a
particular destination server within the cloud (or enterprise network) to
which the work request will be directed. However, the Supreme Court has
made clear that, when considering obviousness, “the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
Here, a person of ordinary skill would reasonably understand that
once a decision is made to execute in the cloud rather than in the private
enterprise network, i.e., to direct a work request to the cloud as described,
for example, in paragraphs 55–59 of Lahiri, the logical next step is to select
a particular destination server in the cloud to which the work request will be
directed, i.e., to choose “a destination server . . . from a server list” of
available cloud servers, as recited in claim 11. A similar choice also would
logically follow were the decision instead made to execute in the private
enterprise network.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 11 under 35 U.S.C. § 103(a). For the same reasons, we also sustain
the Examiner’s rejection of dependent claims 12, 13, and 22–25, which are
not argued separately except based on their dependence on claim 11 (App.
Br. 14).
Because our rationale differs from that set forth by the Examiner,
we denominate this a new ground of rejection under 35 U.S.C. § 103(a).
See 37 C.F.R. § 41.50(b).
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DECISION
The Examiner’s rejection of claims 1–4, 6, 7, 20, and 21 under
35 U.S.C. § 101 is reversed.
The Examiner’s rejections of claims 1–4, 6, 7, 20, and 21 under
35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejections of claims 11–13 and 22–25 under
35 U.S.C. § 103(a) are affirmed. Insofar as our rationale differs from that
set forth by the Examiner, we denominate this a NEW GROUND OF
REJECTION.
The Examiner’s rejections of claims 14–16, 19, and 26–28 under
35 U.S.C. § 103(a) are reversed.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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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-IN-PART; 37 C.F.R. § 41.50(b)6

hh

6 In the view of further prosecution of this application (including any review
for allowance), the Examiner may wish to review the claims for compliance
under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.