Ex Parte Princen et al

Patent Trial and Appeal Board

Sep 9, 2016

13865119 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/865,119 04/17/2013 John Princen
69849 7590 09/13/2016
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
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.
25NP-177 607 8928
EXAMINER
CHOUDHURY, ZAHID
ART UNIT PAPER NUMBER
2116
NOTIFICATION DATE DELIVERY MODE
09/13/2016 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):
svpatents@sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN PRINCEN, SANDRA BERNDT,
MIAO CUI, NIGEL GAMBLE, and WILSON HO
Appeal2015-006485
Application 13/865,119
Technology Center 2100
Before JOHN A. EV ANS, TERRENCE W. McMILLIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-20, which are all the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Acer Cloud
Technology, Inc. App. Br. 2.
Appeal2015-006485
Application 13/865,119
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns a "technique
for quickly switching between a first operating system (OS) and a second
OS" that involves "deactivating the first OS and booting the second OS from
memory" and "inserting a context switching layer between the first OS and a
hardware layer to facilitate context switching." Spec. i-f 8; Abstract; see
App. Br. 2.2 The Specification explains that "the context switching layer can
include a hypervisor" that "enables multiple OSs to share hardware
resources." Spec. i-f 9.
Representative Claim
Independent claim 10 exemplifies the subject matter of the claims
under consideration and reads as follows:
10. A method comprising:
inserting a context switching layer between a first OS and
a hardware layer, the context switching layer adapted to
virtualize resources of a second OS;
allocating memory for a second OS;
loading data associated with the second OS into the
memory;
booting the second OS from the memory.
App. Br. 19 (Claims App.).
2 This decision employs the following abbreviations: "Spec." for the
Specification, filed April 17, 2013; "Final Act." for the Final Office Action,
mailed April 23, 2014; "Adv. Act." for the Advisory Action, mailed
September 5, 2014; "App. Br." for the Appeal Brief, filed December 23,
2014; "Ans." for the Examiner's Answer, mailed June 1, 2015; and "Reply
Br." for the Reply Brief, filed June 22, 2015.
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Application 13/865,119
The Prior Art Supporting the Re} ections on Appeal
As evidence ofunpatentability, the Examiner relies on the following
prior art:
Powell et al.
("Powell")
Guo et al.
("Guo")
Princen et al.
("Princen")
US 2007 /0220246 Al Sept. 20, 2007
US 7,409,536 B2 Aug. 5, 2008
US 8,433,889 B2 Apr. 30, 2013
The Rejections on Appeal3
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Guo and Powell. Final Act. 9-14; Ans. 2---6.
Claims 1, 10, and 19 stand rejected on the ground of obviousness-type
double patenting as unpatentable over various claims in Princen. Final
Act. 3-8.
3 In the Final Office Action, the Examiner (1) objected to the drawings under
37 C.F.R. § 1.83(a) as failing to show every feature of the invention
specified in the claims and (2) rejected claims 1-20 under 35 U.S.C. § 112
i-f 1 as failing to comply with the written-description requirement. Final
Act. 2, 8-9. In the Appeal Brief, Appellants request that we review the
objection to the drawings and the written-description rejection. App.
Br. 4--8. The Board lacks jurisdiction to review the objection to the
drawings. See 35 U.S.C. §§ 6(b ), 134(a); see also Manual of Patent
Examining Procedure (MPEP) § 706.01 (9th ed. Rev. 07.2015 Nov. 2015)
("The practical difference between a rejection and an objection is that a
rejection, involving the merits of the claim, is subject to review by the Patent
Trial and Appeal Board, while an objection, if persisted, may be reviewed
only by way of petition to the Director of the USPTO."). We note, however,
that the Examiner has withdrawn the objection to the drawings. Ans. 6. We
also note that the Examiner has withdrawn the written-description rejection.
Id. at 7. Thus, we do not address that rejection.
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Application 13/865,119
ANALYSIS
We have reviewed the rejections of claims 1-20 in light of
Appellants' arguments that the Examiner erred. In doing so, we have
evaluated only the arguments that Appellants actually make on appeal.
Arguments that Appellants could have made but declined to make are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
For the reasons explained below, we disagree with Appellants'
assertions regarding error by the Examiner.
The Rejection of Claims 1-20
Under 35 U.S.C. § 103(a)
Independent Claims 1, 10, and 19
Claim 10 recites "inserting a context switching layer between a first
OS and a hardware layer, the context switching layer adapted to virtualize
resources of a second OS." App. Br. 19 (Claims App.). Claims 1 and 19
include similar limitations concerning a "context switching layer." Id.
at 18, 20. The Examiner finds that Powell teaches a "context switching
layer" according to the claims because Powell discloses a hypervisor
adapted to virtualize resources of an operating system. Final Act. 11;
Adv. Act. 2; Ans. 6, 13.
Appellants argue that "Powell relates to virtualizing [a] physical
device to guest operating systems" and simply concerns "running operating
systems concurrently" instead of using a "context switching layer." App.
Br. 11-12, 13-14, 16. More particularly, Appellants assert that Powell's
Virtual Service Provider: (1) "does not virtualize resources of a second
operating system"; (2) cannot "be configured to virtualize resources" of a
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Application 13/865,119
second operating system; and (3) "emulates physical devices to other guest
operating systems" but "does not emulate an actual operating system on the
device." Reply Br. 5---6.
We agree with the Examiner that Powell teaches a "context switching
layer" according to the claims. As the Examiner repeatedly points out,
Powell discloses a hypervisor that "may virtualize and share physical
resources." Powell i-f 45; see Final Act. 11; Adv. Act. 2; Ans. 6, 13.
According to the Specification, a hypervisor corresponds to a "context
switching layer." Spec. i-fi-19, 26, 39, 51. The Specification states that "[t]he
context switching layer can be implemented, for example, as a 'minimalist'
hypervisor .... " Id. i-f 26. The Specification explains that "[a] hypervisor
normally presents a guest [operating system] OS with a virtual platform and
... enables multiple [operating systems] OSs to share hardware resources."
Id. i-f 9. Powell depicts a hypervisor located between hardware and various
operating systems. Powell Fig. 3; see Ans. 13; Reply Br. 5.
Appellants' arguments concern Powell's Virtual Service Provider (or
Virtual Device Provider according to the terminology in Powell Figure 3).
App. Br. 11-12, 13-14, 16; Reply Br. 5---6. But the Examiner relies on
Powell's hypervisor, not Powell's Virtual Service Provider. Final Act. 11;
Adv. Act. 2; Ans. 6. Powell shows the hypervisor and Virtual Service
Provider as separate components, and Powell describes them as separate
components. Powell i-fi-129, 43, 45, 58, Fig. 3 (hypervisor 202 and Virtual
Device Provider 312). Thus, Appellants' arguments concerning Powell's
Virtual Service Provider are misdirected for failing to address the
Examiner's rejection.
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Application 13/865,119
Claim 10 recites "allocating memory for a second OS" and "loading
data associated with the second OS into the memory." App. Br. 19 (Claims
App.). Claims 1 and 19 include similar limitations concerning memory
allocation and data loading. Id. at 18, 20. The Examiner finds that Guo
discloses allocating memory for a second operating system and loading data
associated with the second operating system into the memory. Final
Act. 10-11; Adv. Act. 2; Ans. 3, 8-9.
Appellants argue that the claimed subject matter differs from Guo
based on the order in which actions occur. In particular, Appellants contend
that the claims require memory allocation for a second operating system
"after a context switching layer adapted to virtualize resources of the second
operating system has been inserted" between a first operating system and
hardware. Reply Br. 3; see App. Br. 10-11, 13, 15. Appellants then contend
that the claims differ from Guo because Guo partitions or allocates memory
before-not after-a request to enter a second operating system. Reply
Br. 3; see App. Br. 10-11, 13, 15.
Appellants' argument is not commensurate in scope with the claims.
Claim 10 does not expressly or implicitly require that the "inserting" step
occur before the "allocating" and "loading" steps. "Unless the steps of a
method [claim] actually recite an order, the steps are not ordinarily
construed to require one." Interactive Gift Express, Inc. v. Compuserve Inc.,
256 F.3d 1323, 1342 (Fed. Cir. 2001). Like claim 10, claims 1and19 do
not expressly or implicitly require context layer insertion before memory
allocation and data loading. Appellants identify nothing in the Specification
warranting a narrow construction. App. Br. 8-11, 12-13, 14--15; Reply
Br. 3--4. "[D]uring examination proceedings, claims are given their broadest
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Application 13/865,119
reasonable interpretation consistent with the specification." Jn re Hyatt,
211F.3d1367, 1372 (Fed. Cir. 2000).
Accordingly, Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claims 1, 10, and 19 for obviousness based on
Guo and Powell. Hence, we sustain the obviousness rejection. 4
Dependent Claims 2-9, 11-18, and 20
Appellants do not argue the dependent claims separately from the
independent claims. App. Br. 8-16; Reply Br. 2-7. Because Appellants do
not argue the claims separately, they stand or fall together. See 37 C.F.R.
§ 41.37(c)(l)(iv). Hence, we sustain the obviousness rejection.
The Double-Patenting Rejection
In the Final Office Action, the Examiner rejected claims 1, 10, and 19
on the ground of obviousness-type double patenting based on various claims
in Princen. Final Act. 3-8. The Examiner stated that "[a] timely filed
terminal disclaimer ... may be used to overcome an actual or provisional
rejection based on a nonstatutory double patenting ground .... " Id. at 4.
About two weeks before filing the Notice of Appeal, Appellants filed
a terminal disclaimer. The terminal disclaimer was approved the next day.
Neither the Appeal Brief nor the Examiner's Answer mentions the double-
patenting rejection. Accordingly, we will treat the double-patenting
rejection as having been withdrawn.
4 In the event of continued prosecution, the Examiner should consider
whether an antecedent basis exists for the "memory storing instructions"
recited in claim 19.
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Appeal2015-006485
Application 13/865,119
DECISION
We affirm the rejection of claims 1-20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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