International Business Machines Corporation

Patent Trials and Appeals Board

May 20, 2020

2019006240 (P.T.A.B. May. 20, 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.
14/335,888 07/19/2014 Charles D. Brant AUS920130243US2 1059
11445 7590 05/20/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
MARTINEZ-HERNAND, EDGAR R
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/20/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLES D. BRANT and DONALD A. CRONIN

Appeal 2019-006240
Application 14/335,888
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Examiner’s
decision to reject claims 1–7, which are all of the pending claims. See
Appeal Br. 7–12; Final Act. 1–14.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 3.
2 Appellant has also appealed rejections in co-pending application
14/105,727. See Appeal No. 2019-006233.
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Application 14/335,888

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Introduction
The Specification states the invention relates “to techniques for
enabling virtual machines (VMs) associated with a cloud to run on a user’s
computing device rather than on infrastructure associated with the cloud.”
Spec. ¶ 2. Representative claim 1 is the only independent claim:
1. A method, comprising:
receiving, over a network from a client computing
device, not hosted on a cloud, at a server computing device,
hosted on a cloud, a request to access a software package for a
specified duration of time;
generating a custom virtual machine (CVM)
corresponding to the software package;
encrypting the CVM with a license key;
transmitting the CVM to the client; and
transmitting the license key to the client computing
device;
decrypting, by the client computing device, the CVM
with the license key;
booting the CVM on the client computing device; and
terminating the CVM in response to a signal transmitted
from somewhere other than the client computing device.
Appeal Br. 11 (Claims App’x).
The Rejections
The Examiner provisionally rejected claims 1–7 on the ground of
nonstatutory double-patenting over claims from co-pending application
14/105,727. Final Act 4–5.
The Examiner rejected claims 1–7 under 35 U.S.C. § 103 as obvious
over Jorgensen (US 2011/0209064 A1; Aug. 25, 2011), Neil (US 2006/
Appeal 2019-006240
Application 14/335,888

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0004667 A1; Jan. 5, 2006), Pate (US 2012/0110328 A1; May 3, 2012), and
Ferris (US 8,341,625 B2; Dec. 25, 2012). Id. at 6–14.
ANALYSIS
The Provisional, Nonstatutory Double-Patenting Rejection
We decline to rule on the provisional obviousness-type double-
patenting rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential).
The 35 U.S.C § 103 Rejection
In the § 103 rejection of independent claim 1, the Examiner finds
Jorgensen teaches or suggests, inter alia, “transmitting the CVM to the client
computing device” and “booting the CVM on the client computing device.”
Final Act. 7 (citing Jorgensen ¶¶ 56–57). Appellant contends the Examiner
errs in these findings because Jorgensen’s disclosure of providing VM
“extensions” for use with VMs hosted in a cloud does not teach or suggest
these disputed limitations.3 Appeal Br. 7–8.
The Examiner responds by interpreting the claims as “provid[ing]
evidence that . . . the client computing device may be hosted in a different
cloud system” than the cloud system that hosts the server computing device.
Ans. 5. Using this interpretation, the Examiner finds “Jorgensen teaches the
virtual desktop extensions installed in the client computing device allow for
the virtual machine to be used by the requesting client while allowing the
server computing device to control certain functions of the virtual machine,
such as termination at a specific timeout.” Ans. 6 (citing Jorgensen ¶ 49).

3 We reverse the Examiner based on a dispositive issue; therefore, our
decision does not address all of Appellant’s arguments.
Appeal 2019-006240
Application 14/335,888

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The Examiner further explains “the recitation of the client computing device
as ‘not hosted on a cloud’ recites a broad term that is interpreted as the
customer is not hosted on a cloud system”). Id. (emphasis added).
The Examiner errs by interpreting that “a client computing device, not
hosted on a cloud” encompasses a client computing device “hosted in a
different cloud system” (Ans. 5). The claims recite “a server computing
device, hosted on a cloud” and “a client computing device, not hosted on a
cloud.” We find the Examiner’s interpretation improperly rewrites the claim
limitation “not hosted on a cloud” to “not hosted on the cloud.”
Appellant persuades us the Examiner’s interpretation results in
reversible error. Jorgensen teaches a “virtual desktop extension manager”
that a client device uses to manage extensions to VMs. See Jorgensen,
Abstract. As Jorgensen’s Figure 3 illustrates, the client device and the
virtual desktop extensions manager are not in a cloud, and the VMs with
which the client device may interact are in either a “public” or “private”
cloud. See Jorgensen ¶¶ 47–48. The disclosures of Jorgensen relied upon
by the Examiner teach techniques for the virtual desktop extension manager
to manage virtual desktop extensions to VMs. See Jorgensen Figs. 3–4,
¶¶ 30, 49, 52, 54, 56–57, and 59. Although Jorgensen discloses an
embodiment that downloads the virtual desktop extensions from the cloud to
the client device (Jorgensen ¶ 49), the VMs themselves are not downloaded
to the client device, i.e., the VMs in Jorgensen are always disclosed as being
in a cloud. The Examiner does not persuasively explain how or why
downloading and running VM extensions to manage VMs hosted in a cloud
would suggest “booting the CVM on the client computing device,” as recited
in the independent claims. See Final Act. 7 (citing Jorgensen ¶57).
Appeal 2019-006240
Application 14/335,888

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Accordingly, we do not sustain the § 103 rejection of independent
claim 1. We also, therefore, do not sustain the rejection of the dependent
claims 2–7.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7 103 Jorgenson, Neil, Pate, Ferris 1–7
Overall
Outcome
1–7

REVERSED