VMware, Inc.

Patent Trials and Appeals Board

Sep 10, 2021

2020004711 (P.T.A.B. Sep. 10, 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.
14/716,834 05/19/2015 Wenguang WANG C516 2173
136237 7590 09/10/2021
Barta, Jones & Foley, P.C.
(Patent Group - VMware)
3308 Preston Road
#350-161
Plano, TX 75093
EXAMINER
HOLLAND, SHERYL L
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
09/10/2021 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):
docket@bjfip.com
ipadmin@vmware.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WENGUANG WANG
____________

Appeal 2020-004711
Application 14/716,834
Technology Center 2100
____________

Before JOSEPH L. DIXON, CARL L. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–9, 12–16, and 18–24, which
constitute all pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
VMware, Inc. Appeal Br. 1.
Appeal 2020-004711
Application 14/716,834

2
STATEMENT OF THE CASE
Appellant’s disclosure is directed to performing transactions across a
distributed system of elements. Abstr., Spec. 1:15–3:5, Fig. 2.
Claim 1 is exemplary of the invention and reads as follows (emphases
added):
1. A method for processing transactions among elements of a
distributed system, said method comprising:
receiving, by a second element, a transaction, a transaction
identifier (ID) and an ID of a first element, the received transaction
ID indicating a recency of the received transaction, and wherein the
first element and the second element are each one of a virtual machine
or a computing device;
comparing, by the second element, the received transaction ID
to a set of transaction IDs maintained by the second element to
determine whether the received transaction is older than transactions
previously performed, the set of transaction IDs corresponding to the
transactions previously performed by the second element;
on condition that the received transaction ID is older than the
transactions previously performed, determining, by the second
element, to not perform the received transaction; and
based on determining to not perform the received transaction,
transmitting a report to the first element that the received transaction
was successfully performed.
Appeal Br. 18 (Claims Appendix).

Appeal 2020-004711
Application 14/716,834

3
REFERENCES AND REJECTIONS
The prior art relied upon by the Examiner is:
Name Reference Date
Junqueira et al. US 2013/0110883 Al May 2, 2013
Colrain et al. US 2013/0066949 Al Mar. 14, 2013

Claims2 3, 5, and 6 stand rejected under 35 U.S.C. § 112(a) for failure
to comply with the written description requirement. Final Act. 10–12.
Claims 3 and 5 stand rejected under 35 U.S.C. § 112(b) for
indefiniteness. Final Act. 13–14.
Claims 1–3, 5–9, 12–16, and 18–24 stand rejected under 35 U.S.C. §
103 as unpatentable over Junqueira and Colrain. Final Act. 15–29.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. Arguments which Appellant could have made, but did not
make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We
provide the following for highlighting and emphasis.
The § 112(a) Rejections
Claims 3, 5, and 6 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 10–12.
Appellant argues the Examiner errs in rejecting claim 1, and independent
claims 9 and 14, because paragraph 10 of the Specification provides support

2 The rejections of claims 1, 9 and 14 under 35 U.S.C. § 112(a) as failing to
comply with the written description are withdrawn. Ans. 24.
Appeal 2020-004711
Application 14/716,834

4
for the limitation “based on determining to not perform the received
transaction, transmitting a report to the first element that the received
transaction was successfully performed.” Appeal Br. 9–10).
In the Answer, the Examiner withdraws the rejection of claims 1, 9,
and 14. Ans. 24. The Examiner notes that the rejections of claims 3, 5 and 6
under 35 U.S.C. § 112(a) have not been addressed by Appellant and these
rejections remain outstanding. Id. at 25. In the Reply Brief, Appellant
acknowledges that the rejections of independent claims 1, 9, and 14 has been
withdrawn, but does not address the rejections of claims 3, 5, and 6, which
rejections have not been withdrawn. Reply Br. 2.
In view of the above, we sustain the rejections of claims 3, 5, and 6
under 35 U.S.C. § 112(a).

The § 112(b) Rejections
Claims 3 and 5 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention. Final
Act. 13–14. In the Answer, the Examiner notes that the rejections of claims
3 and 5 under 35 U.S.C. § 112(b) have not been addressed by Appellant and
these rejections remain outstanding. Ans. 25.
Appellant does not address the § 112(b) rejections of claims 3 and 5 in
the Appeal Brief or the Reply Brief.
In view of the above, we sustain the rejections of claims 3 and 5 under
35 U.S.C. § 112(b).
Appeal 2020-004711
Application 14/716,834

5
The § 103 Rejections
Claim 1, and Dependent claims 2, 3, 5, 6, and 8
In the Final Action, the Examiner finds the combination of Junqueira
and Colrain teaches the limitations of claim 1. Final Act. 15–18 (citing
Junqueira ¶¶ 29, 37, 47; Colrain ¶ 50, 51, 170). The Examiner provides
reasoning why one of ordinary skill in the art would have been motivated to
combine the teachings of Junqueira and Colrain. Id. at 17–18.
Appellant argues the Examiner errs because Junqueira does not teach
the following claim 1 limitations (also referred to as “disputed limitations”
(1) and (2)).
(1) on condition that the received transaction ID is older than the
transactions previously performed, determining, by the second element, to
not perform the received transaction; and
(2) based on determining to not perform the received transaction,
transmitting a report to the first element that the received transaction was
successfully performed (emphasis added).

Appeal Br. 11–13.
Appellant additionally argues the Examiner errs in finding Colrain
teaches additional disputed limitations “the transaction ID indicating a
recency of the received transaction” and finding Colrain teaches “an ID of a
first element,” as recited in claim 1. Id. at 13–15 (citing Colrain ¶¶ 53, 103,
119).
In the Answer, the Examiner finds, inter alia, that disputed limitations
(1) and (2) are optional and carry no patentable weight. Ans. 25–26. The
Examiner finds the limitations are not executed when the “received
transaction ID” is not older than “transactions previously performed.”
In the Reply Brief, regarding the patentable weight of disputed
limitations (1) and (2), Appellant argues this is the first time the Examiner
Appeal 2020-004711
Application 14/716,834

6
has brought this interpretation of the claims to Appellant’s attention and
Appellant has not been given a fair opportunity to react to this assertion.
Reply Br.3 3–4 (citing In re Kronig, 539 F.2d 1300, 1302–03, (Fed. Cir.
1976).
As discussed below, we are not persuaded by Appellant’s arguments
and agree, instead, with the findings and conclusion of the Examiner
regarding claim 1.
Claim 1 is a method claim directed to “a method for processing
transactions among elements of a distributed system (emphasis added).”
Disputed limitations (1) and (2) recite an “on condition that” limitation that
is “on condition that the received transaction ID is older than the
transactions previously performed.” Therefore, in the event the condition is
not satisfied, there appears to be no need to perform disputed limitations (1)
and (2).
We note that conditional steps employed in a method claim need not
be found in the prior art if, under the broadest reasonable interpretation, the
method need not invoke those steps. See Ex parte Schulhauser, Appeal No.
2013-007847, 2016 WL 6277792, at *3–4 (PTAB Apr. 28, 2016)
(precedential) (holding that in a method claim, a step reciting a condition
precedent does not need to be performed if the condition precedent is not
met). See also Manual of Patent Examining Procedure (MPEP)
§ 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) (citing Schulhauser); In re
Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do
not narrow the claim because they can always be omitted.”); Ex parte Katz,

3 The Reply Brief in the record is not numbered. We added page numbers,
beginning with page 1 through page 9.
Appeal 2020-004711
Application 14/716,834

7
Appeal No. 2010-006083, 2011 WL 1211248, at *2 (BPAI Mar. 25, 2011)
(citing Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364). Accordingly,
Appellant’s arguments directed to claim 1 disputed limitations (1) and (2)
are not commensurate with the broadest reasonable interpretation of
independent claim 1.
We also are not persuaded by Appellant’s argument that the
Examiner’s findings regarding the Examiner’s conditional claim
interpretation should not be considered. Insofar as Appellant protests a
failure to designate a new ground of rejection, it is presented to an
inappropriate entity. The Manual of Patent Examining Procedure (MPEP)
explains that 37 C.F.R. § 41.40 provides the “exclusive procedure” for
requesting review of a failure to designate a new ground of rejection, i.e.,
through a petition to the Director under 37 C.F.R. § 1.181. MPEP
§ 1207.03(b) (9th ed. Rev. 07.2015 Nov. 2015). The MPEP also explains
that “[t]his procedure should be used if an appellant feels an answer includes
a new ground of rejection that has not been designated as such and wishes to
reopen prosecution . . . .” Id. Upon review of the record, we fail to find that
Appellant has submitted a petition to the Director. The “[f]ailure of [an]
appellant to timely file such a petition will constitute a waiver of any
arguments that a rejection must be designated as a new ground of rejection.”
37 C.F.R. § 41.40(a).
In view of the above, Appellant’s arguments regarding disputed
limitations (1) and (2) are not applicable to the rejection of claim 1.
Regarding the additional disputed limitations, the Examiner notes that
the Examiner relies upon Junqueira, not Colrain, to teach transaction ID
indicating “a recency of a transaction.” Ans. 28 (citing Junqueira ¶ 37). The
Appeal 2020-004711
Application 14/716,834

8
Examiner finds Colrain teaches “an ID of the first element.” Id. at 29 (citing
Colrain ¶ 50). The Examiner finds
Colrain teaches that a first server stores a logical
transaction ID as part of a commit operation (0050). The logical
transaction ID may be comprised of a version, a database
identifier, pluggable database identifier, database instance
identifier (i.e. element ID), logical session number, commit
number and service identifier (0119-127). Thus, Colrain teaches
associating transactions with a device identifier, i.e. an element
ID.
Id.
Appellant does not specifically address the additional disputed
limitations in the Reply Brief. Reply Br. 1–9.
With the above case law applicable to conditional steps in a method
claim, Appellant’s arguments regarding disputed limitations (1) and (2) are
not persuasive. Further, Appellant’s arguments regarding the additional
disputed limitations are not persuasive because the Examiner’s findings are
reasonable. Additionally, we note Appellant does not address the Examiner’s
findings in the Reply Brief. Appellant fails to persuasively respond to such
findings and, therefore, fails to show Examiner error. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court [or this Board] to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.”).
Therefore, we sustain the rejection of claim 1, and dependent claims
2, 3, 5, 6, and 8 as these claims are not argued separately.
The § 103 Rejection of Independent Claims 9 and 14
We note independent claims 9 and 14 are not method claims and,
therefore, our conditional steps claim 1 analysis, supra, is not applicable.
Appeal 2020-004711
Application 14/716,834

9
Appellant argues claims 9 and 14 recite limitations that are similar to
disputed claim 1 limitations (1) and (2). Reply Br. 9. Therefore, based on
the record before us, we consider Appellant’s arguments for claims 9 and 14.
Claim 9 is set forth below (emphasis added)
9. One or more computer-readable storage media including
computer-executable instructions that, when executed, cause at least
one processor to process transactions among elements of a distributed
computing system by:
receiving, by the at least one processor, a transaction, a
transaction identifier (ID) and an ID of a first element, the transaction
ID indicating a recency of the received transaction, wherein the at least
one processor corresponds to a second element, and wherein first
element and the second element are each one of a virtual machine or a
computing device;
comparing, by the at least one processor, the received transaction
ID to a set of transaction IDs maintained by the second element to
determine whether the received transaction is older than transactions
previously performed, the set of transaction IDs corresponding to the
transactions previously performed by the second element;
(1) on condition that the received transaction ID is older than
the transactions previously performed, determining, by the at least one
processor, to not perform the received transaction;
and
(2) based on determining to not perform the received transaction,
reporting to the first element that the received transaction was
successfully performed (emphasis and (1) and (2) added).

Disputed limitations (1) and (2) of claim 9 are similar to disputed
limitations (1) and (2) of claim 1 and relate to transactions to be performed
by elements in a distributed system with less resource consumption than
existing two-phase commit protocols in part by eliminating the use of the
undo log. Spec. ¶ 10, Fig. 3. A first element of the distributed system
assigns a transaction identifier (ID) to a transaction. Spec. ¶ 10. The first
element transmits the ID to a plurality of second elements. Id. The plurality
Appeal 2020-004711
Application 14/716,834

10
of second elements compares the transaction ID to a set of transaction ID’s
maintained at each of the plurality of second elements. Id.
Disputed limitation (1) of claim 9 requires on condition that the
received transaction ID is older than the transaction previously performed,
determining not to perform the transaction. Disputed limitation (2) of claim
9 requires, based on determining to not perform the received transaction,
reporting the received transaction was successfully performed. Together,
disputed limitations (1) and (2) set forth, inter alia, reporting that a received
transaction was performed by the second element when the received
transaction was not performed by the second element.
Appellant argues the Examiner errs in finding Junqueira teaches claim
1 disputed limitation (1) “based on determining to not perform the received
transaction, transmitting a report to the first element that the received
transaction was successfully performed.” Appeal Br. 11–12. According
to Appellant
Claim 1 provides the ability to report that the “received
transaction” was performed by the second element even though
it was not performed by the second element. At best, Junqueira
describes that upon determining a received transaction is
duplicate of a previous transaction, providing an indication that
the previous transaction was performed ( e.g., since the received
transaction is just a duplicate of the previous transaction).
However, there is a clear difference between reporting that a
received transaction was performed by the second element when
the received transaction was in fact not performed by the second
element (as provided in Claim 1) to reporting that a previous
transaction (e.g., duplicate) was previously performed, as
described in Junqueira.
Id. at 12.
Appeal 2020-004711
Application 14/716,834

11
In the Answer, the Examiner finds Colrain teaches transmitting a
successful report for an unsuccessful transaction. Ans. 28 (citing Colrain
¶ 170). The Examiner finds
Colrain further teaches reporting transaction success. For
example: a server may receive a transactional set of commands
and at step 1108, the server determines whether at least one
transaction in the set of transactions has not yet committed. The
server sends a client a response indicating that the transaction set
was successful, see Fig. 11 (0170). Since, only one of the
transaction set is required to commit for a successful response, it
follows that a successful set may include a failed command and
still generate a successful response. Therefore, Colrain teaches
“based on determining to not perform the received transaction,
transmitting a report to the first element that the received
transaction was successfully performed”.
Id. at 30.
In the Reply Brief, Appellant argues the Examiner errs in finding
Colrain transmitting a success report for an unsuccessful transaction teaches
claim 9 disputed limitation (2). Reply Br. 5 (citing Colrain ¶ 170).
Appellant argues this limitation does not simply recite that the successful
report is submitted for an unsuccessful transaction. Id. Instead, according to
Appellant, in claim 1, it is determined not to perform the transaction, as
opposed to attempting to perform the transaction and the attempt being
unsuccessful as allegedly described in Colrain. Id. Appellant argues
That is, at best, paragraph [0170] of Colrain describes
reporting that a transaction is successful when all transactions in
the transaction set of commands have been committed (see 1108
and 1110 in Figure 11 of Colrain). Appellant submits that only
then is it reported to the client that the transactional set of
commands are treated as completed. Further, at 1116 in Figure
11 of Colrain, if it is determined that at least one transaction in
the transactional set of commands has not yet committed, then
Appeal 2020-004711
Application 14/716,834

12
the client receives an indication that the commands have been
blocked. Nowhere does Colrain describe or suggest that an
unsuccessful transaction is reported as completed as alleged by
the Examiner.
Further, on page 30 of the Examiner’s Answer, the
Examiner asserts that Figure 11 of Colrain describes that when
only one transaction set is required to commit for a successful
response, it follows that a successful set may include a failed
command and still generate a successful response. Appellant
disagrees. At 1108 in Figure 11 of Colrain, it is determined
whether one transaction in the set has not committed. If even one
transaction in the set has not committed, the commands in
Colrain are reported as blocked at 1116. If all transactions in the
set have committed at 1108, only then is the transaction set
treated as completed at 1110.
Id. at 6, 7.
We are persuaded by Appellant’s arguments because the Examiner
provides insufficient evidence to support the finding that Colrain teaches
claim 9 disputed limitation (2). In particular, the Examiner does not show
Colrain teaches reporting that a received transaction was performed by the
second element when the received transaction was in fact not performed by
the second element.
In view of the above, we do not sustain the rejection of claim 9, and
independent claim 14 which is directed to a system and recites similar
limitations to claim 9 disputed limitations (1) and (2). We also do not
sustain the rejection of dependent claims 12, 13, 15, 16, and 18–24.

Appeal 2020-004711
Application 14/716,834

13
CONCLUSION
For the reasons stated above, we sustain the rejection of claims 3, 5,
and 6 under 35 U.S.C. § 112(a) for failure to comply with the written
description requirement.
We sustain the rejection of claims 3 and 5 under 35 U.S.C. § 112(b)
for indefiniteness.
We sustain the obviousness rejection of claims 1, 2, 3, and 5, 6, and 8,
and we do not sustain the obviousness rejection of claims 9, 12–16, and 18–
24.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 6, 9,
14
112(a) Written description 3, 5, 6
3, 5 112(b) Indefiniteness 3, 5
1–3, 5–9,
12–16, 18–
24
103 Junqueira, Colrain 1–3, 5, 6,
8
9, 12–16,
18–24
Overall
Outcome
1–3, 5, 6,
8
9, 12–16,
18–24

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)(iv).
See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART