International Business Machines Corporation

Patent Trials and Appeals Board

Dec 22, 2020

2019005620 (P.T.A.B. Dec. 22, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/585,475 12/30/2014 Gregory R. Hintermeister ROC920140146US1 7962
46296 7590 12/22/2020
MARTIN & ASSOCIATES, LLC
P.O. BOX 548
CARTHAGE, MO 64836-0548
EXAMINER
PATEL, RONAK
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
derekm@ideaprotect.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY R. HINTERMEISTER and DAVID NIEDERGESES

Appeal 2019-005620
Application 14/585,475
Technology Center 2400

Before ALLEN R. MacDONALD, JEAN R. HOMERE,
and CAROLYN D. THOMAS, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 10–20, all of the claims pending.2 Appeal
Br. 1. Claims 1–9 have been canceled. Appeal Br. 12 (Claims App.). We

1 We refer to the Specification filed Dec. 30, 2014 (“Spec.”); the Non-Final
Office Action, mailed Sept. 5, 2018 (“Non-Final Act.”); the Appeal Brief,
filed Jan. 28, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed May 17,
2019 (“Ans.”); and the Reply Brief, filed July 16, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies International Business Machines
Corporation., as the real party-in-interest. Appeal Br. 1. As noted by
Appellant, this appeal relates to Appeal No. 2019-005551 (14/586,078). Id.
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have jurisdiction under 35 U.S.C. § 6(b). We affirm, and designate our
affirmance as a new ground of rejection.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for pre-deploying and relocating pre-configured
embedded cloud elements (518, 520) for fast configuration/deployment of a
scalable cloud computing environment. Spec. ¶¶ 2, 6.
Figure 6, reproduced and discussed below, is useful for
understanding the claimed subject matter:

Figure 6 above illustrates cloud manager (510) utilizing environment
configuration mechanism (ECM- 350) to relocate virtual machines (VMs
518, 520) from pre-deployed/pre-configured virtual server/embedded cloud
(1) on physical server (512) to a more permanent location in physical server
(610) as the workload of VMs (518, 520) exceeds a predetermined threshold.
Spec. ¶¶ 6, 62–67.
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In particular, upon pre-deploying embedded clouds (1, 2) on physical
server (512), ECM (350) monitors resource consumption of VMs (518, 520)
therein, and dynamically relocates VMs (518, 520) from embedded cloud (1)
in physical server (512) to a more permanent location in physical server
(610, 612) on dedicated hardware as their resource consumption exceeds a
predetermined threshold, ECM (350). Id. ¶¶ 65– 67.
Claims 10 and 18 are independent. Claim 10, reproduced below with
disputed limitations emphasized, is illustrative:
10. A method for expediting configuration and
deployment of a cloud computing environment comprising:
predeploying a plurality of embedded clouds on a
physical server, wherein each of the plurality of embedded
clouds comprise an embedded cloud controller and at least one
embedded host for provisioning workloads;
preconfiguring the plurality of embedded clouds with a
minimal set of cloud resources, where the minimal set of cloud
resources includes central processing unit resources and
memory resources such that multiple embedded clouds can be
predeployed on the physical server;
allowing a user to provision workloads on an embedded
host on an embedded cloud of the plurality of predeployed
embedded clouds, and
relocating the provisioned workloads by the user from
the embedded host to a new host on permanent physical
hardware when a resource loading of the physical server of the
embedded cloud exceeds a threshold.

Appeal Br. 12 (Claims App.).

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III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Gupta US 2012/0096457 A1 Apr. 19, 2012
Srinivasan US 2014/0164598 A1 June 12, 2014
Singh US 2015/0378765 A1 Dec. 31, 2015
IV. REJECTION
The Examiner rejects claims 10–20 under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Gupta, Singh, and Srinivasan.
Non-Final Act. 3–17.
V. ANALYSIS
We consider Appellant’s arguments in the order they are presented in
the Appeal Brief, pages 4–11 and the Reply Brief, pages 2–8.4
Appellant argues that the Examiner erred in finding that the
combination of Gupta, Singh, and Srinivasan teaches or suggests pre-
deploying embedded clouds on a physical server, as recited in independent
claims 10 and 18. Appeal Br. 4, Reply Br. 2. In particular, Appellant argues
that Singh does not cure the admitted deficiencies of Gupta because Singh is
concerned with “pre-provisioning virtual machines” and “scaling resources
in a deployment environment located on multiple physical machines in the
cloud computing platform 110.” Reply Br. 2 (citing Singh ¶ 37) (emphasis

3 All reference citations are to the first named inventor only.
4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2014).
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added). According to Appellant, even if Singh’s deployment environment
can be considered as the embedded clouds, Singh teaches provisioning them
on a cloud computing platform with multiple physical servers, and pre-
deploying VM pools therein as opposed to pre-deploying the deployment
environments on a single physical server. Id. at 3. Appellant admits
nonetheless that Singh teaches deploying the deployment environment on
physical servers 148. Id. (citing Singh, Fig. 1). These arguments are not
persuasive of reversible Examiner error.
As a preliminary matter, Appellant’s argument regarding pre-
deploying the deployment environments on a single server is not
commensurate with the scope of the claim. The disputed claim limitation
does not recite or require a single server. Under the broadest reasonable
interpretation, the recitation of “pre-deploying a plurality of embedded
clouds on a physical server,” encompasses pre-deploying the embedded
clouds on one or more physical servers. Accordingly, Singh’s disclosure,
as admitted by Appellant, of a cloud computing platform including a
plurality of physical servers upon which are deployed the VM pools and in
which resources of the deployment environments are located teaches the
disputed limitations. Further, Appellant’s attempt to distinguish Singh’s
VM pools from the deployment environments misses the mark. In fact,
Singh discloses that VM pools are collections of virtual machines that have
been provisioned, configured and pre-loaded with software by a pool
manager to execute one or more application components in a deployed
application. Singh ¶¶ 16, 17. According to Singh, the pool manager may
create the VM pools within deployment environments provided by a cloud
computing platform provider including network of storage arrays shared
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between physical servers thereon. Id. ¶ 19. Therefore, Singh discloses that
the deployment environment as including one or more VM pools, which are
stored on physical servers interfacing with one another. Id. ¶ 21.
Accordingly, Singh’s disclosure of deployment environments including the
VM pools deployed on the physical servers teaches the embedded clouds
pre-deployed on one or more physical servers, as required by independent
claims 10 and 18.
Further, Appellant argues that Singh does not teach each embedded
cloud includes a cloud controller and a host for provisioning workloads.
Appeal Br. 5. According to Appellant, Singh’s disclosure of virtual
computing resources (e.g., load balancer, appserver node) in the cloud
computing platform do not teach the cloud controller for performing cloud
management function such as deploying VMs. Id. at 5. This argument is
not persuasive. Singh discloses an application director, which may be
implemented in the VMs to deploy an application into the deployment
environment, as well as for managing the resources of the VMs. Singh
¶¶ 21, 22, 29. Accordingly, Singh’s resource director, when implemented in
the VM pools within a deployment environment teaches the cloud controller,
and the host provisioning the workloads, as recited in independent claims 10
and 18.5

5 Because we have modified the Examiner’s proposed combination of Gupta,
Singh, and Srinivasan, we designate our affirmance of the Examiner’s
rejection as a new ground of rejection. See In re Leithem, 661 F.3d 1316,
1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and the
same prior art references, alone, is insufficient to avoid making a new
ground of rejection when the Board relies on new facts and rationales not
previously raised to the applicant by the examiner.”).

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Additionally, Appellant argues that Srinivasan does not teach or
suggest relocating workloads from embedded host to a new host on a
permanent physical hardware. Appeal Br. 7. This argument is not
persuasive because it does not particularly address the Examiner’s finding
that Srinivasan’s disclosure of migrating workload between cloud
environments when a predetermined threshold is reached thereby
complimenting Singh to migrate cloud resources from one physical server to
another. Non-Final Act. 6–7 (citing Srinivasan ¶ 16).
We find nonetheless that the combination of the cited teachings of
Gupta, Singh, and Srinivasan is no more than a simple arrangement of old
elements with each performing the same function it had been known to
perform, yielding no more than what one would expect from such an
arrangement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Therefore, the ordinarily skilled artisan, being “a person of ordinary
creativity, not an automaton,” would have been able to fit the teachings of
the cited references together like pieces of a puzzle to predictably achieve
deployment environments containing VM pools pre-deployed on a cloud
computing platform located on a physical server, wherein the VM pools
include a resource director for controlling resources being shared by
multiple servers. Because Appellant has solely addressed Singh’s teachings
without addressing the merits of Gupta and Srinivasan’s teachings,
Appellant has not demonstrated that the Examiner’s proffered combination
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Therefore, we agree
with the Examiner that the proposed modification would have been within
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the capabilities of the ordinarily skilled artisan. Consequently, we are
satisfied that, on this record, that the combination of Gupta, Singh, and
Srinivasan would have taught or at least suggested the disputed limitations
as discussed above. Accordingly, we are not persuaded of error in the
Examiner’s rejection of claims 10 and 18 over the combined teachings of
Gupta, Singh, and Srinivasan.
Regarding the rejection of claims 11–17, 19, and 20, Appellant has
not presented separate patentability arguments or has reiterated substantially
the same arguments as those previously discussed for the patentability of
claims 10 and 18. As such, claims 11–17, 19, and 20 fall therewith. See 37
C.F.R. § 41.37(c)(1)(iv).
VI. CONCLUSION
We affirm the Examiner’s rejection of claims 10–20.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph 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 grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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VII. DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
New Ground
10–20 103 Gupta, Singh, Srinivasan 10–20
10–20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)