VMWARE, INC.

Patent Trials and Appeals Board

Feb 16, 2021

2019005303 (P.T.A.B. Feb. 16, 2021)

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.
15/242,614 08/22/2016 Prateek Barapatre C271 5394
152606 7590 02/16/2021
Olympic Patent Works PLLC
4979 Admiral Street
Gig Harbor, WA 98332
EXAMINER
ZHAO, BING
ART UNIT PAPER NUMBER
2198
MAIL DATE DELIVERY MODE
02/16/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRATEEK BARAPATRE, YOGESH BENDRE, SAGAR JOSHI,
PREETHI CHANDUR, and SHYAM SUNDAR RAO MANKALA
Appeal 2019-005303
Application 15/242,614
Technology Center 2100
Before JAMES B. ARPIN, MICHAEL J. ENGLE, and SCOTT RAEVSKY,
Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals from the Examiner’s decision to reject claims 1–
20, all of the pending claims. 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
VMware, Inc. Appeal Br. 1.
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Application 15/242,614

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CLAIMED SUBJECT MATTER
The claims relate to an extended cloud-management facility. Claim 1,
reproduced below, is illustrative:
1. An extended cloud-management facility comprising:
a private data center having multiple servers, one or more
internal communications networks, multiple mass-storage
devices, and a cloud-management facility that manages the
private data center and provides an administration-and
management interface through which management and
administration operations and functionalities are accessed;
a remote cloud-computing facility having multiple
servers, one or more internal communications networks,
multiple mass-storage devices, and an interface through which
cloud-computing-facility infrastructure and resources are
accessed and virtual machines are moved;
cloud-management-facility load-discovery and virtual-
machine-selection components within the private data center
that control automated movement of virtual-machines and
applications from the private data center to the remote cloud
computing facility and from the remote cloud-computing
facility to the private data center;
a remote cloud-management-facility agent within the
remote cloud-computing facility; and
a secure communications connection through which the
cloud-management facility communicates with the remote
cloud-management-facility agent in order to manage virtual
machines moved from the private data center to the remote
cloud computing facility by the cloud-management-facility
load-discovery and virtual machine-selection components.

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REFERENCES
The Examiner relies on the following references:
Raghu
Ghosh
US 9,311,140 B2
US 9,606,828 B2
Apr. 12, 2016
Mar. 28, 2017
Patel US 2013/0152076 A1 June 13, 2013

REJECTION2
Claims 1–20 are rejected under 35 U.S.C. § 103(a)3 as obvious over
the combined teachings of Ghosh, Raghu, and Patel. Final Act. 4.
ANALYSIS
Appellant makes three arguments. Appellant contends that the
Examiner erred in finding Ghosh and Raghu teach or suggest two separate
limitations: (1) the “cloud-management-facility” limitation of claim 1 and
(2) the “remote cloud-management-facility” limitation of claim 1. Appeal
Br. 24–30. Appellant also contends that the Examiner erred in finding a
motivation to combine Ghosh and Raghu. Appeal Br. 23–24, 30–34. None
of these arguments persuades us of reversible examiner error.

cloud management facility
Appellant contends the Examiner errs in finding Ghosh and Raghu
teach or suggest the following “cloud-management-facility” limitation of
claim 1: “cloud-management-facility load-discovery and virtual-machine-

2 The Examiner withdraws a rejection under 35 U.S.C. § 112. Ans. 3.
3 Although the Examiner refers to 35 U.S.C. § 103(a), we apply the AIA
version of § 103. On this record, we discern no difference between
application of pre-AIA and AIA obviousness analysis.
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Application 15/242,614

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selection components within the private data center that control automated
movement of virtual-machines and applications from the private data center
to the remote cloud computing facility.” Appeal Br. 24–26.
Appellant’s arguments focus on the “control automated movement”
language of this limitation. According to Appellant, Ghosh does not teach
or suggest “automated movement of virtual machines and applications
between the private cloud and public cloud.” Id. at 24. Rather, Appellant
believes Ghosh “simply determines which virtual machines should be
migrated from the private cloud to the public cloud, but does not carry out
the migration.” Id. Keying in on the claimed “automated” movement,
Appellant argues that Gosh’s virtual machines are not “automatically
migrated,” nor is there “even a cursory suggestion of how that migration is
carried out.” Id. at 25. What Gosh discloses, Appellant contends, is “simply
. . . a method for selecting virtual machines for migration in a well-known
private-cloud/public-cloud hybrid” that “suffers the latency problems”
disclosed in the Specification. Id. at 26.
The Examiner finds, and we agree, that Ghosh teaches this limitation.
Final Act. 5 (citing Ghosh 6:59–65, 11:1–40, 12:38–67, 13:38–50).
Regarding Appellant’s “automated” migration argument, the Examiner finds
that “the whole point of Ghosh’s invention is to provide a better way to
select the best VM to migrate during a scaling out process.” Ans. 10. The
Examiner reasons, “one need only to read the whole disclosure of Ghosh to
see that VMs that are selected to be migrated are in fact migrated,” as shown
by “claim 1, last limitation: selecting and migrating said virtual machine
instance.” Id. at 10–11. Appellant does not address this last finding, which
we find persuasive. See Reply Br., passim.
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The Examiner also identifies a mismatch between Appellant’s
argument and what is claimed. “[C]ontrary to what the applicant seem[s] to
suggest,” the Examiner finds, claim 1 “doesn’t actually disclose migration of
virtual machines” but rather components “that control automated movement
of virtual machines and applications.” Ans. 11. The Examiner points to
Ghosh’s disclosure of a “management system that performs the functions of
. . . automated selection of VM[s] to be migrated” as “components that
control automated movements of virtual machines and applications.” Id.
(citing Ghosh 6:51–65). Responding to this last point, Appellant contends
that the claim language, “automated movement of virtual-machines and
applications from the private data center to the remote cloud-computing
facility and from the remote cloud-computing facility to the private data
center,” is equivalent to the phrase “automated virtual-machine migration.”
Reply Br. 15. Appellant claims this interpretation “would be clear to those
familiar with modern computer science and technology.” Id.
Setting aside that this argument fails to cite supporting evidence,
Appellant misses the Examiner’s point. The Examiner correctly identifies
the rub—the claim does not positively recite automated migrating of virtual
machines, only “components . . . that control automated movement of
virtual-machines.” Ans. 11 (emphasis added). We agree with the Examiner
that Ghosh teaches what claim 1 actually recites, namely “components . . .
that control automated movement of virtual-machines,” by disclosing
components that “select”—i.e., control—“the virtual machines in the private
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cloud to be migrated” and “selecting and migrating said virtual machine
instance.” Ghosh 6:60–62 (emphasis added), 14:52.4
remote cloud-management-facility
Appellant next contends the Examiner errs in finding the combination
of Ghosh and Raghu teaches or suggests the “remote cloud-management-
facility” limitation: “a remote cloud-management-facility agent within the
remote cloud-computing facility.” Appeal Br. 26–30. The Examiner finds
Raghu discloses this limitation. Final Act. 6 (citing Raghu Fig. 8, 10:15–
11:44); Ans. 11–14. We agree with the Examiner because Raghu discloses a
cloud-computing facility 1002 having a VDC management server, which
includes virtual-data-center agents 824–826 that offload virtual-data-center
management-server functions. E.g., Raghu 11:30–44, 12:50–52.
Many of Appellant’s arguments rely on language not present in the
claims, including the following:
 Raghu does not disclose “any type of inter-cloud load-
balancing method” or “deficiencies with inter-cloud load
balancing.” Appeal Br. 23.
 Raghu “is not concerned with extending a cloud management
facility within a private data center into a remote cloud-
computing facility.” Id. at 26.
 Raghu does not disclose the following (id. at 27):

4 Even if Ghosh’s migrating were a manual process, merely automating a
manual activity cannot confer patentability. See MPEP § 2144.04(III)
(“[B]roadly providing an automatic or mechanical means to replace a
manual activity which accomplished the same result is not sufficient to
distinguish over the prior art.”) (citing In re Venner, 262 F.2d 91, 95 (CCPA
1958)).
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a remote cloud-management facility agent added to
a remote cloud-computing facility in order to
extend the cloud management facility of the
private data center into a remote cloud-computing
facility to manage virtual machines running on
resources allocated by the private data center from
the remote cloud-computing facility through an
infrastructure-as-a-service interface.
 “There is nothing in the Raghu reference that is any way related
to extending the cloud-management facility of a private data
center to provide for management of computational resources
allocated to a public cloud-facility interface within a remote
cloud-computing facility.” Id. at 29.
 “Raghu also does not teach, disclose, mention, or suggest an
automated load-balancing system that automatically migrates
virtual machines back and forth between a private data center
and a remote cloud computing facility.” Id.
Each of these arguments “fail[s] from the outset because . . . they are not
based on limitations appearing in the claims.” See In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Appellant also contends the Examiner mischaracterizes Raghu,
arguing that because Appellant’s representative wrote Raghu, Appellant
knows how Raghu differs from claim 1. Appeal Br. 26. Appellant casts
Raghu as “not concerned with migrating virtual machines between the
private data center and a remote cloud-computing facility in order to carry
out automated load balancing.” Id. On this point, Appellant overlooks that
the Examiner relies on Ghosh, not Raghu, for claim 1’s “control automated
movement of virtual-machines” language. Final Act. 5. Not only that, but
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as with Appellant’s other arguments, claim 1 does not recite “in order to
carry out automated load balancing.”
Appellant also disagrees with the Examiner’s reliance on portions of
Raghu identical to those in the Specification. Appeal Br. 27. As such,
Appellant contends that the Examiner’s findings render the new material in
the Specification superfluous: “[w]ere a VDC server [in Raghu] equivalent
to a remote cloud-management-facility agent or an extended cloud-
management facility, this final subsection of the current application in which
the currently claimed extended cloud-management facility is discussed
would be wholly unnecessary.” Id. Appellant argues “there would have
been no reason for Appellants to have introduced and explained the phrases
‘extended cloud-management facility’ and ‘remote cloud-management-
facility agent’ were either of these phrases equivalent to the phrase ‘VDC
server’” in Raghu. Id. Appellant then summarizes several passages of
Raghu, concluding that “none of these figures or passages . . . relates to the
currently claimed remote cloud-management-facility agent.” Id. at 28.
Although the Examiner relies on Appellant’s prior application, none
of these arguments are persuasive because they do not point to a distinction
between the claims and the teachings of Raghu, apart from a mere assertion
that Raghu discloses something different. Appellant’s comparison of the
Specifications of the current application and Raghu fails to persuade us of
Examiner error.
Appellant further contends that Raghu “concerns only virtual data
centers within a single physical data center,” whereas the claim requires
“[t]wo different physical data centers.” Id. Appellant does not explain what
part of the claim requires two physical data centers, nor do we see any.
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Regardless, this argument falls flat because the Examiner relies on Raghu
for an agent “within the remote cloud-computing facility,” not two facilities.
See Final Act. 6.
Motivation to Combine
The Examiner finds that it would have been obvious to combine
Raghu with Ghosh because they are analogous and their combination would
increase efficiency:
both are directed towards movement of virtual machines in
multi-cloud environment. One with ordinary skill in the art
would be motivated to incorporate the teachings of Raghu into
that of Ghosh because Raghu further improves the efficiency of
movement of virtual machines in multi-cloud environment (col
2 line 6-26, col 19 line 44 - col 20 line 4).
Final Act. 6.
Appellant asserts improper hindsight in the Examiner’s combination.
Appeal Br. 23, 30–34. Appellant argues that the Examiner’s rationale
“makes no sense” because “Ghosh is not directed towards movement of
virtual machines” and performs migration “manually.” Id. at 30. Appellant
also criticizes Ghosh as “involv[ing] the very significant latencies which are
identified as a problem in the current application that the currently disclosed
extended cloud-management facility solves.” Id. According to Appellant,
Raghu, however, discusses a common management facility over multiple
cloud-computing facilities. Id. As the argument goes, Raghu therefore
“cannot be used in the general case in which the private and public cloud
contain different types of management facilities.” Id.
Appellant further attacks the combination, contending that “[t]hose
familiar with cloud computing understand that a public cloud does not and
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cannot allow users/subscribes to directly manage the computational resource
within the public cloud.” Id. at 31. Appellant criticizes Ghosh as only
describing a “well-known hybrid cloud system” and Raghu as “unrelated to
load-balancing between a private data center and a remote cloud-computing
facility.” Id. Finally, Appellant cites several Federal Circuit cases
contending that the “Examiner’s single-sentence references to increased
efficiency and increased security do not come close to meeting the[se legal]
requirements [for proving obviousness].” Id. at 31–33.5
The Examiner responds that “one with ordinary skill in the art at the
time of the invention would obviously combine the references to yield a
predictable result of a VM [virtual machine] management and/or movement
system in cloud environments that is more efficient and secure.” Ans. 9.
We agree with the Examiner. Appellant has not persuasively, or even
directly, addressed, the merits of the Examiner’s contention that the
combination would “further improve[] the efficiency of movement of virtual
machines in multi-cloud environment” and increase security. See Final
Act. 6; Ans. 9; Reply Br. 20–21. Appellant’s arguments contradict our
findings regarding the teachings of the references, set forth above.
Appellant also fails to cite any evidence in support of its argument. See
Appeal Br. 30–31; Reply Br. 20–21. Mere attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.

5 Appellant also challenges the Examiner’s reliance on Patel solely for
“language that does not occur in the current claims.” Appeal Br. 31; see
Final Act. 7. We defer to the Examiner to determine whether Patel should
remain in the combination.
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1997). And Appellant’s citation to court decisions arising from a different
context—litigation—overlooks that in examination before the Office, the
Examiner’s burden is to make a prima facie showing of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner meets that
burden, Appellant bears the burden of coming forward with evidence or
argument. Id. We find the Examiner made the requisite showing, but
Appellant failed to rebut it.
Lastly, Appellant does not point to evidence of record that the
combination would be “uniquely challenging or difficult for one of ordinary
skill in the art” or “represent[] an unobvious step over the prior art.”
Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)).
Nor has Appellant provided objective evidence of secondary considerations,
which our reviewing court states “operate[] as a beneficial check on
hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., 725 F.3d
1341, 1352 (Fed. Cir. 2013). The Examiner’s findings are reasonable
because the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” because the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21.
The claimed subject matter exemplifies the principle that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 416.
We therefore sustain the rejection of claim 1, along with the rejection
of independent claims 17 and 20 argued collectively with claim 1, and the
dependent claims, which Appellant does not argue separately. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2019); see Appeal Br. 22, 34.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–20 103 Ghosh, Raghu, Patel 1–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED