Ex Parte Novaes et al

Board of Patent Appeals and Interferences

Feb 14, 2011

10443079 (B.P.A.I. Feb. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REYNALDO NOVAES and ROQUE SCHEER
____________________

Appeal 2009-007828
Application 10/443,0791
Technology Center 2100
____________________

Before JEAN R. HOMERE, JAY P. LUCAS, AND ST. JOHN
COURTENAY, III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed May 22, 2003. The real party in interest is Hewlett-
Packard Development Corp.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007828
Application 10/443,079

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 3, 5 to 12, and
16 to 21 under authority of 35 U.S.C. § 134(a). The Board of Patent
Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Claims 4 and 13 to 15 are cancelled.

We affirm.

Appellants’ invention relates to a method of exploiting idle time on a
plurality of computers in a distributed, possibly, clustered environment in a
manner that is secure and transparent to the user (Spec. 1, ll. 8 to 10). In the
words of Appellants:
The invention provides particular utility in that the
machines forming the cluster need not have the
same operating system. The virtual machine needs
to be compiled for the various operating systems.
However, once this is done and the virtual machine
software installed, the virtual machine(s) can be
executed at will across a network of machines
possibly having different operating systems,
hardware architectures and processing power.
(Spec. 7, l. 28 to 8, l. 2).

The following claim illustrates the claims on appeal:
Claim 1:
1. A method of running a plurality of
interrelated computational tasks on a plurality of
host computers, each of the plurality of host
computers running a primary operating system,
comprising the steps of:
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Application 10/443,079

establishing a virtual machine running on
one of the plurality of host computers, the virtual
machine configured to run as a native application
emulating a secondary operating system including
storage and i/o functionality; and

converting, by way of an abstraction layer
that corresponds to a host system call converter,
system calls of the virtual machine to system calls
of the host computer,

wherein the virtual machine provide access
to system resources of the host computer via the
host system call converter.

The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Hughes US 6,854,009 B1 Feb. 08, 2005
(filed Dec. 22, 1999)
Agesen US 6,961,806 B1 Nov. 01, 2005
(filed Dec. 10, 2001)
Cota-Robles US 2004/0010788 A1 Jan. 15, 2004
(filed Jul. 12, 2002)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claim 20 stands rejected under 35 U.S.C. § 112, 1st paragraph, for
failing to comply with the enablement requirement.
R2: Claims 1, 2, 5, 7, 8, 17, 18, 20, and 21 stand rejected under
35 U.S.C. § 103(a) for being obvious over Hughes in view of Agesen.
R3: Claims 3 and 6 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Hughes and Agesen in view of Cota-Robles.
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R4: Claims 9 to 12, 16, and 19 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Hughes and Agesen in view of Applicants’ Admitted
Prior Art (hereafter “AAPA”).

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to have been
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The pivotal issue before us on appeal involves whether Appellants
have shown that the Examiner erred in rejecting the claims under
35 U.S.C. §§ 103(a). The issue under § 103(a) specifically turns on whether
the combination of Hughes and Agesen teaches or suggests Appellants’
claim limitation of “converting, by way of an abstraction layer that
corresponds to a host system call converter, system calls of the virtual
machine to system calls of the host computer,” as recited in claim 1. The
issue under 112, 1st paragraph, is whether one skilled in the art, after reading
the Specification, could have practiced the claimed invention (i.e., claim 20)
without undue experimentation.

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

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Disclosure
1. Appellants have invented a method of “converting, by way of an
abstraction layer that corresponds to a host system call converter, system
calls of the virtual machine to system calls of the host computer.” (Claim 1).
Agesen
2. The Agesen reference discloses converting original code intended to
run on a virtual processor into code to be run on an underlying physical
processor of the hardware platform (Abstract). “Original code” may include
executable code (col. 12, l. 2). Agesen specifically discloses two types of
executable code: reads or writes to a common memory (col. 12, ll. 57 to 58).
The binary translator of Agesen’s virtual machine monitor performs a
transformation permitting the code to be executed on the underlying
hardware platform (col. 9, ll. 30 to 37).

PRINCIPLE OF LAW
Appellants have the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

Argument with respect to the rejection
of claim 20
under 35 U.S.C. § 112, 1st paragraph [R1]

The Examiner has rejected the noted claim for failing to meet the
enablement requirement, pages 3 to 4 of the Examiner’s Answer.
The Examiner finds that the Specification contains no support for
operating the virtual machine at a priority level on the host computer lower
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than a screen-saving application and a power-savings application (Ans. 4,
top). At most, the Examiner says the Specification discloses that one may
need to disable a screen-saver and other power savings functions to run a
virtual machine (id.).
The “enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation.” AK Steel Corp. v. Sollac and Ugine, 344 F.3d
1234, 1244 (Fed. Cir. 2003) (citation omitted). Enablement is a question of
law involving underlying factual inquiries. See Genentech, Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997); see also In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
Here, we find that although not explicitly stated, the context of the
disclosure clearly and necessarily supports the fact that if the power savings
and screen-saver functions are disabled, the virtual machine is the second
lower priority function operating. (See Spec. 8, ll. 20 to 28.). Therefore, we
find one skilled in the art, after reading the Specification, could have
practiced the claimed invention without undue experimentation. We thus
find error in the rejection R1.

Arguments with respect to the rejection
of claims 1, 2, 3, 5 to 12, 16 to 20, and 21
under 35 U.S.C. § 103(a) [R2 to R4]

The Examiner has rejected the noted claims for being rendered
obvious over Hughes and Agesen, pages 4 to 8 of the Examiner’s Answer.
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Exemplary claim 1 recites, in relevant part, “converting, by way of an
abstraction layer that corresponds to a host system call converter, system
calls of the virtual machine to system calls of the host computer.”
Appellants argue that Hughes says nothing about a virtual machine
having a host system call converter for converting system calls of the virtual
machine to system calls of a host computer (App. Br. 6, top).
The Examiner cites Agesen’s disclosure of the virtual machine
monitor (VMM) transforming privileged code through a binary translation
process prior to execution of the virtual instruction stream (col. 7, ll. 1 to 6;
Ans. 5, bottom).
Appellants have invented a method of “converting, by way of an
abstraction layer that corresponds to a host system call converter, system
calls of the virtual machine to system calls of the host computer” (FF#1). In
comparison, we find that Agesen discloses converting (Appellants’ claimed
“converting”) original code (the claimed “system calls” from the virtual
machine) intended to run on a virtual processor (the claimed “virtual
machine”) into code to be run on an underlying physical processor (the
claimed “host computer”) of the hardware platform (FF#2).
We note that Agesen’s “original code” may include executable code
(id.). Agesen specifically discloses two types of executable code: reads or
writes to a common memory (id.). A person of ordinary skill in the art
would have understood that Agesen’s privileged code (e.g., reads/writes) as
suggestive of the claimed “system calls” of the virtual machine. The skilled
artisan would have also recognized that the binary translator of Agesen’s
virtual machine monitor, which performs the above-described
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transformation (id.), was suggestive of Appellants’ claimed “converter”
(claim 1).
Since Agesen’s original code undergoes a transformation permitting
the code to be executed on the underlying hardware platform (id.), we find
that the disclosure meets the claim limitation “converting, by way of an
abstraction layer that corresponds to a host system call converter, system
calls of the virtual machine to system calls of the host computer” (claim 1).
We thus find Appellants have not demonstrated error in the rejection with
respect to representative claim 1.
In accordance with 37 C.F.R. § 41.37(c)(1)(vii), Appellants separately
argue several of the dependent claims. For example, regarding claim 18,
Appellants argue that Hughes “says nothing about providing isolation
between cluster applications running on a virtual machine and regular user
applications running on a host computer.” (App. Br. 7, top). Regarding
claim 20, Appellants contend “[i]t is unclear why operating the virtual
machine at a priority level lower than a screen saver application would lead
to predictable results [versus] operating the virtual machine at a priority
level higher than the screen saver application.” (App. Br. 7, middle).
In addition, Appellants separately argue claim 6. Regarding the Cota-
Robles reference, Appellants contend that the reference is not directed to
“providing access to a host computer of a guest file system (e.g., a memory)
of a virtual machine, but rather to providing access to a virtual machine of
resources of a host computer.” (App. Br. 8, top).
Regarding claim 16, Appellants argue: “[T]o say that one skilled in
the art would place operation of a virtual machine at a lower priority process
relative to a host operating system does not teach or suggest that that skilled
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person would place operation of the virtual machine right near to the bottom
of devices and systems that can utilize the host computer.” (App. Br. 8,
bottom to 9, top). Finally, with respect to claim 19, Appellants argue that
“since ‘specified user operation’ cannot be an idle period, the Office
Action’s assertion with respect to Applicants’ Admitted Prior Art is not
relevant with respect to claim 19.” (App. Br. 9, middle).
We carefully reviewed the Briefs, the Answer, the cited portions of
the references, and indeed the entire references. We adopt and endorse the
Examiner’s findings and analysis respecting each of the separately argued
claims. (See Ans. 6 to 19.) We specifically refer Appellants to the
“Response to Argument” section of the Answer for further details. (See
Ans. 15 to 19.)

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown error in the rejection R1 (for lack of enablement) of
claim 20. We conclude Appellants have not demonstrated that the Examiner
erred in rejecting claims 1 to 3, 5 to 12, and 16 to 21.

DECISION
We reverse the enablement rejection R1 of claim 20. We affirm the
Examiner’s obviousness rejections, R2 to R4, of claims 1 to 3, 5 to 12, and
16 to 21.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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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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