International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMay 20, 202014105727 - (D) (P.T.A.B. May. 20, 2020) Copy Citation 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. 14/105,727 12/13/2013 Charles D. Brant AUS920130243US1 1015 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 2019-006233 Application 14/105,727 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 8–20, which are all of the pending claims. See Appeal Br. 7–15; Final Act. 1–16.2 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 14/335,888. See Appeal No. 2019-006240. Appeal 2019-006233 Application 14/105,727 2 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. ¶ 1. Claim 8 is representative: 8. A system, comprising: one or more processors; a non-transitory, computer-readable storage medium coupled to the one or more processors; and logic, stored on the computer-readable storage medium and executed on at least one of the one or more processors, for: receiving, over a network at a server computing device, hosted on a cloud, from a client computing device, not hosted on a cloud, a request to access a software package for a specified duration of time; generating, by the server computing device, a custom virtual machine (CVM) corresponding to the software package; encrypting, by the server computing device, the CVM with a license key; transmitting, by the server computing device, the CVM to the client computing device; transmitting the license key to the CVM 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., Claims App’x 2. Appeal 2019-006233 Application 14/105,727 3 The Rejections The Examiner provisionally rejected claims 8–12 and 13–20 on the ground of nonstatutory double-patenting over claims from co-pending application 14/335,888. Final Act. 4–5. The Examiner rejected claims 8–20 under 35 U.S.C. § 103 as obvious over Jorgensen (US 2011/0209064 A1; Aug. 25, 2011), Neil (US 2006/ 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 5–14. 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 claims 8 and 15,3 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 3 Claims 8 and 15 recite identical limitations for logic stored on a non- transitory, computer-readable storage medium (NTCRSM logic) for execution by one or more processors, and the two claims differ only in that claim 8 recites “[a] system, comprising:” that requires both “one or more processors” and the NTSCRSM logic, whereas claim 15 recites “[a] computer programming product, comprising:” the (identical) NTCRSM logic. See Appeal Br., Claims App’x 2, 4. The Examiner rejected claims 8 and 15 as a group, i.e., they stand rejected for the same reasons, based on the same findings. See Final Act. 6–11. Appeal 2019-006233 Application 14/105,727 4 VM “extensions” for use with VMs hosted in a cloud does not teach or suggest these disputed limitations.4 Appeal Br. 8–9. 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). 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 4 We reverse the Examiner based on a dispositive issue; therefore, our decision does not address all of Appellant’s arguments. Appeal 2019-006233 Application 14/105,727 5 which the client device may interact are in either a “public” or “private” cloud. 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. Accordingly, we do not sustain the § 103 rejection of independent claims 8 and 15. We also, therefore, do not sustain the rejection of the dependent claims 9–14 and 16–20. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8–20 103 Jorgenson, Neil, Pate, Ferris 8–20 Overall Outcome 8–20 REVERSED Copy with citationCopy as parenthetical citation