Detailed Action
This Office Action is in response to communication filed 12/01/2025
Claims 1-20 are pending and presented for examination.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In the response filed, applicant argues in substance that:
Claim 1 recites a builder VM running on the same host as the target VM one which the container image is configured to run and on a different host than the application transformer [remarks, pg. 8-9].
Subhraveti does not appear to teach any distinction between an application transformer and a builder VM. Subhraveti identifies one component, the interconversion …Subhraveti fails to teach or suggest a separate builder machine and application transformer [remarks, pg. 9].
Subhraveti does not disclose builder VM on a separate host from an application transformer [remarks. Pg. 10]
Subhraveti does not disclose a builder VM running on the same host as a target VM [remarks, pg. 10].
In response to the arguments above, the interconversion management server which implements process of fig. 400-900 is implemented on a separate host than the virtual machines executing one or more applications which are implemented on cloud computing platforms [see Subhraveti: fig. 1].
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The inter-conversion management server performs the processes of converting VM into a composite container by identifying applications executing on the virtual machines in the cloud, obtaining the application metadata, building the container specification based on application metadata and then deploying the container specification to target virtual machine executing on the cloud, See fig. 3. In other words, the inter-conversion management server executing on the management server outside the cloud network performs all of the process including gathering application metadata, building the container image and deploying the container image on the target virtual machine.
Subhraveti does not clearly teach source VM, builder VM and target VM being implemented on the same host (host 2) operating second operating system AND builder VM implemented on a separate host (host 2) than the application transformer which is implemented on host 1 operating a first operating system.
However, it would have been obvious to a person of ordinary skilled in the art to modify Subhraveti in order to implement builder VM on the same host as target virtual machine and separate the functionalities of gathering process artifacts and building a container image by the builder VM because the court has held various common practices [see below] as normally requiring only ordinary skill in the art and hence are considered routine expedients. The court has deemed by law the following practices as routine expedients by one of ordinary skill in the art – for example - making a product or process portable, integral, separable, adjustable or continuous; reversing, duplication or rearrangements of parts, etc. See MPEP 2144.04.
2144.04 Legal Precedent as Source of Supporting Rationale [R-07.2022]
As discussed in MPEP § 2144, an examiner may utilize legal precedent as a source of supporting rationale when warranted and appropriately supported. In formulating any rejection invoking legal precedent, the examiner must take care to ensure that the rationale is explained and shown to apply to the facts at hand. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below. If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection.
I. AESTHETIC DESIGN CHANGES
In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.). But see Ex parte Hilton, 148 USPQ 356 (Bd. App. 1965) (Claims were directed to fried potato chips with a specified moisture and fat content, whereas the prior art was directed to french fries having a higher moisture content. While recognizing that in some cases the particular shape of a product is of no patentable significance, the Board held in this case the shape (chips) is important because it results in a product which is distinct from the reference product (french fries).).
II. ELIMINATION OF A STEP OR AN ELEMENT AND ITS FUNCTION
A. Omission of an Element and Its Function Is Obvious if the Function of the Element Is Not Desired
Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.). See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
B. Omission of an Element with Retention of the Element's Function Is an Indicium of Nonobviousness
Note that the omission of an element and retention of its function is an indicium of nonobviousness. In re Edge, 359 F.2d 896, 149 USPQ 556 (CCPA 1966) (Claims at issue were directed to a printed sheet having a thin layer of erasable metal bonded directly to the sheet wherein said thin layer obscured the original print until removal by erasure. The prior art disclosed a similar printed sheet which further comprised an intermediate transparent and erasure-proof protecting layer which prevented erasure of the printing when the top layer was erased. The claims were found nonobvious over the prior art because although the transparent layer of the prior art was eliminated, the function of the transparent layer was retained since appellant’s metal layer could be erased without erasing the printed indicia.).
III. AUTOMATING A MANUAL ACTIVITY
In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined "old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed." The court held that broadly 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.).
IV. CHANGES IN SIZE, SHAPE, OR SEQUENCE OF ADDING INGREDIENTS
A. Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
B. Changes in Shape
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
C. Changes in Sequence of Adding Ingredients
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
V. MAKING PORTABLE, INTEGRAL, SEPARABLE, ADJUSTABLE, OR CONTINUOUS
A. Making Portable
In re Lindberg, 194 F.2d 732, 93 USPQ 23 (CCPA 1952) (Fact that a claimed device is portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results.).
B. Making Integral
In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice."); but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.).
C. Making Separable
In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.").
D. Making Adjustable
In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954) (Claims were directed to a handle for a fishing rod wherein the handle has a longitudinally adjustable finger hook, and the hand grip of the handle connects with the body portion by means of a universal joint. The court held that adjustability, where needed, is not a patentable advance, and because there was an art-recognized need for adjustment in a fishing rod, the substitution of a universal joint for the single pivot of the prior art would have been obvious.).
E. Making Continuous
In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) (Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art.).
VI. REVERSAL, DUPLICATION, OR REARRANGEMENT OF PARTS
A. Reversal of Parts
In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955) (Prior art disclosed a clock fixed to the stationary steering wheel column of an automobile while the gear for winding the clock moves with steering wheel; mere reversal of such movement, so the clock moves with wheel, was held to be an obvious modification.).
B. Duplication of Parts
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
C. Rearrangement of Parts
In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
In other words, the ordinary routine practice of separating one or more functionalities of inter-conversion management server between the management server itself and one of the virtual machine located on the second host in the cloud computing platform and implementing container-based VM at the same host as the source application-based VM would have been obvious to one of ordinary skilled in the art, as evidenced by MPEP 2144.04.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-8, 11-16 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable SUBHRAVETI (US 2018/0088973 A1).
As per claim 1, Subhraveti discloses A method comprising:
gathering, by an application transformer running a first operating system on a first host [fig. 1 item #104: Inter-conversion management server, [0033]: the management server is running or executing an operating system], process artifacts of an application running on a first virtual machine running a second operating system on a second host [i.e. source VM with OS2] [fig. 3 step#302-308: obtaining and capturing file system, contents of file system and metadata of the file system of the VM, [0038]: obtaining by the management server application state and metadata of the virtual machine which is running another operating system in the cloud, e.g. [0027-0030], [0040-0041]: VM 402 is Unix-based system which is running Unix operating system];
sending, to a builder VM running the second operating system [i.e. target VM with OS2], the process artifacts of the application [[0054]: Docker-File and ADD instructions is provided to a target virtual machine to build the container, [0056-0057]: use base operating system (i.e. same OS as the source VM) provided by source distribution and ADD instructions to docker-file. Docker file is an example of container specification which is generated based on captured application state [0043], [0038]. Target VM receives the docker-file+instructions and builds the container]; and
building, by the builder VM [target platform or target VM], a container image corresponding to the application based on the process artifacts [fig. 3 Step#310-312: create separate container image for each application of the virtual machine and use the container spec to generate second virtual machine, [0046], [0042]], the container image being configured to run on the second operating system in a target VM [[0055-0057]: build VM from Docker-File, select the target VM and build the VM image for the specified or target cloud platform by using base operating system provided by the source, i.e. source VM, and applying instructions of Docker-File to the base operating system].
Note: [0048] Each container can be implemented across different machines or platforms with same or different operating systems.
Subraveti does not teach builder VM being implemented on the second host and first virtual machine and target VM being implemented on the second host [i.e. source VM, builder VM and target VM are on same host and application transformer is on a separate host].
However, it would have been obvious to a person of ordinary skilled in the art before the effective filing date of the claimed invention to modify, using routine or common practice, Subhraveti in order to separate one or more functionalities of gathering process artifacts and building a container image by the builder VM and implement builder VM on the same host as target virtual machine and source VM because the court has held various common practices, as set forth above, as normally requiring only ordinary skill in the art and hence are considered routine expedients. The court has deemed by law the following practices as routine expedients by one of ordinary skill in the art – For example - making a product or process portable, integral, separable, adjustable or continuous; reversing, duplication or rearrangements of parts, etc. See MPEP 2144.04.
One of ordinary skill in the art would have been motivated because separating and/or rearranging one or more functionalities between multiple hosts is well established common or routine practice [See MPEP 2144.04].
As per claim 4, Subhraveti discloses the method of claim 1, wherein the builder VM runs a container engine, and wherein building the container image is performed by the container engine [fig. 3 step 312: Generate a 2nd VM using container specification, [0030], [0054]: The blobbed data is provided to target VM and container is built by the docker-file]. Because container is built by the docker-file at the target VM, container engine in the target VM becomes inherent component].
As per claim 5, Subhraveti discloses the method of claim 1, further comprising: discovering a plurality of components of a plurality of processes running on the first VM [fig. 3 step#302-308: obtaining and capturing file system, contents of file system and metadata of the file system of the VM including plurality of applications, [0038]: obtaining by the management server application state and metadata of the virtual machine which is running another operating system, [0040-0041, 0047]]; and receiving a selection of one or more of the plurality of components as the application [[0041-0042]: identify applications deployed in VM to create container for each application, [0038]: convert plurality of applications into a set of containers].
As per claim 6, Subhraveti discloses the method of claim 1, wherein building the container image is further based on a base container image associated with the second operating system [[0046]: choose base operating system image built for target and layering the application state data as indicated by container specification on top of it to produce container image], [0056-0057]].
As per claim 7, Subhraveti discloses the method of claim 1, wherein the first VM, the builder VM, and the application transformer are in a same data center [[0033-0034], fig. 1: the conversion management server and various virtual machines including source and target are implemented in the same cloud-computing platform, which is implicitly operating in the same data center, [0023]].
As per claims 8, 11-16, 18-20, they do not teach or further define over the limitations in claims 1, 4-7. Therefore, claims 8, 11-16, 18-20 are rejected for the same reasons as set forth in claims 1, 4-7.
Claim(s) 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over SUBHRAVETI (US 2018/0088973 A1) in view of Marvin (US 2004/0168153 A1).
As per claim 2, Subhraveti discloses the method of claim 1, wherein the application comprises a plurality of components [fig. 3 step#302-308: obtaining and capturing file system, contents of file system and metadata of the file system of the VM including plurality of applications, [0038]: obtaining by the management server application state and metadata of the virtual machine which is running another operating system, [0040-0041, 0047]].
However, Subhraveti does not teach wherein each of the plurality of components of the application are being identified using a respective component signature.
Marvin teaches wherein each of the plurality of components of the application are being identified using a respective component signature (i.e. an identifier unique identifying the component) ([0016]: A Table containing a unique identifier/signature for the component, the version of the component, the location for that version of the component and status of the component).
Therefore, it would have been obvious to a person of ordinary skilled in the art before the effective filing date of the claimed invention to modify Subhraveti in view of Marvin in order to have plurality of components of the application identified using unique component identifier or component signature.
One of ordinary skilled in the art would have been motivated because it would have enabled managing the application efficiently by managing the components of the application based on its unique identifiers.
As per claim 9, it does not teach or further define over the limitations in claim 2. Therefore, claim 9 is rejected for the same reasons as set forth in claim 9.
Claim(s) 3, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over SUBHRAVETI (US 2018/0088973 A1) in view of Chawda et al. (hereinafter Chawda, US 11,327,750 B1).
As per claim 3, Subhraveti discloses the method of claim 1, as set forth above, wherein the first operating system is Linux [[0044]: conversion server is implementing the docker-file using Linux OS, [0026]] and the builder machine has CPU hardware virtualization enabled [[0030]: virtual machines are emulation of a given computer system, [0046, 0054] target VM. Note: Without hardware virtualization enabled, virtual machines cannot be implemented].
However, Subhraveti does not explicitly teach wherein the second operating system is Windows (i.e. the source VM and target VM are running Windows operating system).
Chawda, from the same field of endeavor [col. 8 L25-52], discloses a transformation service identifying one or more application components to be extracted from a first host running a second operating system which is Windows [col. 10 L26-43, col. 13 L48-67: 1st host operating system is Windows Server running Windows OS].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Subhraveti in view of Chawda in order to run the windows-based operating system on the first or source virtual machine.
One of ordinary skill in the art would have been motivated because it would have enabled windows-based applications or any existing software applications executing on virtual machines to be “containerized” and migrated to any infrastructure hosting a suitable container engine [Chawda: col. 8 L25-52].
As per claims 10 and 17, they do not teach or further define over the limitations in claim 3. Therefore, claims 10 and 17 are rejected for the same reasons as set forth in claim 3.
Additional References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Parthasarathy et al., US 2020/0034167 A1: Automatic Application Migration across virtualization environments.
McPherson et al., US 2016/0216948 A1: Source to Image framework for a platform as a service system
Varkhedi et al., US 2013/0166504 A1: Systems and Methods for Virtual Machine Migration.
Bo et al., US 2018/0196654 A1: Docker Container Operating Method and System.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAMAL B DIVECHA whose telephone number is 571-272-5863. The examiner can normally be reached IFP Normal Hours M-F: 8am-4.30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Colleen Fauz can be reached at 5712721667. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KAMAL B. DIVECHA
Primary Patent Examiner
Art Unit 2453
/KAMAL B DIVECHA/Supervisory Patent Examiner, Art Unit 2453
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