Ex Parte Arcese et al

Patent Trial and Appeal Board

Mar 9, 2016

12940218 (P.T.A.B. Mar. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/940,218
58139 7590
IBM CORP, (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
11/05/2010
03/11/2016
FIRST NAMED INVENTOR
Mauro Arcese
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
FR920090029US 1 7009
EXAMINER
TEETS, BRADLEY A
ART UNIT PAPER NUMBER
2195
NOTIFICATION DATE DELIVERY MODE
03/11/2016 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURO ARCESE, GIUSEPPE CIANO, MARCO IMPERIA, and
LUIGI PICHETTI
Appeal2014-004108
Application 12/940 ,218
Technology Center 2100
Before ROBERT E. NAPPI, CARLL. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 13, 14, 16-21, and 23-26, which constitute all of the rejected claims
pending in this application. Claims 1-12 have been cancelled. Claims 15
and 22 are allowed. Adv. Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2014-004108
Application 12/940,218
THE INVENTION
The claimed invention is directed to a method for optimizing virtual
storage size for virtual machines. In the claimed method, a target set of
virtual machines for optimization is chosen based on information related to
the virtual machines and on shrinking constraints. Spec 2: 1-11.
Claim 13, reproduced below, is illustrative of the claimed subject
matter:
13. A computer program product embodied in a computer
readable storage medium for optimizing virtual storage size in a
virtual computer system comprising at least one virtual machine,
each of said at least one virtual machine being allocated one or
more virtual disks, the computer program product comprising the
programming instructions for:
determining a target set of virtual machines among said at
least one virtual machine comprised in said virtual computer
system based on information related to said at least one virtual
machine and on shrinking constraints;
for each virtual machine in said target set of virtual
machines, identifying each virtual disk allocated to said virtual
machine; and
for each virtual disk allocated to said virtual machine,
analyzing said virtual disk, estimating a virtual disk saving
quantity based on the virtual disk analysis, generating a resized
virtual disk based on the estimated virtual disk saving quantity,
and replacing said virtual disk with said resized virtual disk.
THE REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
I Rawson I US 2005/0232192 Al I Oct. 20, 2005
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Appeal2014-004108
Application 12/940,218
THE REJECTION2
Claims 13, 14, 16-21, and 23-26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Rawson. Final Act. 11-17.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We agree
with Appellants that the Examiner erred in rejecting the claims.
Claim 13 recites, inter alia, that a "target set of virtual machines" is
determined "based on information related to said at least one virtual machine
and on shrinking constraints." Claims App'x (App. Br. 25). The Examiner
finds Rawson determines a target set of virtual machines subject to
corrective action by excluding those machines that have a service level
agreement ("SLA") requiring a certain level of service. Final Act. 11 (citing
Rawson i-f 37); see also Ans. 9-10 ("Those guest operating systems which
are eligible for corrective action are a subset of the operating systems, this
subset is a target set as these guest operating systems will be targeted for
corrective action"). The Examiner further finds Rawson discloses
determining the target set based on the need to power off some of the
2 In addition to the rejection discussed infra, in the Final Action the
Examiner also provisionally rejected claims 13-26 on the grounds of
nonstatutory obviousness type double patenting (Final Act. 4--8) and claims
13-19 under 35 U.S.C. § 101 because the claimed invention is directed to
non-statutory subject manner (Final Act. 9-10). Those grounds of rejection
were withdrawn following the filing of a terminal disclaimer (double
patenting rejection) and amending the Specification(§ 101 rejection). Adv.
Act. 1-2; Ans. 2-3.
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Appeal2014-004108
Application 12/940,218
memory allocated to the virtual machines and the reduction of power is a
shrinking constraint. Final Act. 11 (citing Rawson i-fi-1 31, 46, 4 7); see also
Ans. 10-11.
Appellants describe Rawson-in relevant part-as follows: Rawson
discloses that corrective action is taken for each eligible guest operating
system. App. Br. 4---6 (citing Rawson i137). In an embodiment, otherwise
eligible guest operating systems with SLAs may be eliminated from the
group that is eligible for corrective action. Id. Those guest operating
systems that have been selected for corrective measures have virtual
memory pages associated with the guest operating systems reassigned to
occupy a more contiguous region of physical memory. App. Br. 7-8 (citing
Rawson i147).
According to Appellants, the "set of eligible guest operating systems"
in Rawson is "not determined based on information related to the at least one
virtual machine and on shrinking constraints." Reply Br. 3; see also App.
Br. 6-8. More specifically, Appellants argue reassigning virtual memory is
not the same as selecting a guest operating system for corrective action.
App. Br. 7-8; Reply Br. 3--4.
We are persuaded by Appellants' argument that the Examiner erred in
finding Rawson discloses the determining step of claim 1. Claim 1 requires
that the determination of the target set be based on two factors: (1)
"information related to said at least one virtual machine" and (2) "shrinking
constraints." Claim 13 (Claim App'x at App. Br. 25). Although Rawson
discloses selecting a target set based on whether or not there is an SLA-
"information related to said at least one virtual machine"-it does not
disclose using a second factor-such as a shrinking constraint. Rawson
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Appeal2014-004108
Application 12/940,218
il 3 7. Furthermore, we agree with Appellants that there is no relation
between the corrective action of reassigning memory of the guest operating
systems in the target set and the selection of guest operating systems to be in
the target set. Accordingly, the Examiner erred in finding that the taking of
corrective action on a target set to be the same as determining which virtual
machines are part of the target set.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
Accordingly, we are constrained on this record to reverse the Examiner's
rejection of claim 13, along with the rejection of claim 20, which is argued
on the same grounds, and dependent claims 14, 16-19, 21, and 23-26. Cf
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
13, 14, 16-21, and 23-26.
REVERSED
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